Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
'MPEP 306-Assignment of Division (3)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
"Written Description" Requirement (2)
The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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(B) (4)
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
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The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
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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:
Adjustments (7)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
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For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
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If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
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If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
To learn more:
The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
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Amounts (4)
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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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
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And (D) (1)
The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
To learn more:
And Apparatus Claims (1)
An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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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:
and Continuation-in-Part in Relation to Parent Application' (3)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
And Extensions (7)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
To learn more:
The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
To learn more:
And Proportions (4)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To learn more:
Conventional Activity (1)
“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
To learn more:
Described In A Printed Publication (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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First And Second Paragraphs (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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First Paragraph (5)
The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement.
MPEP 2166 provides a form paragraph for rejecting single means claims:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
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The best mode requirement is one of the three requirements for a patent specification under 35 U.S.C. 112(a). It requires that the inventor disclose the best way of carrying out the invention that they know of at the time of filing the patent application.
The MPEP states:
“[The specification] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
It’s important to note that the best mode requirement is separate and distinct from the enablement requirement. As mentioned in the MPEP, citing In re Newton: “Best mode is a separate and distinct requirement from the enablement requirement.”
The purpose of the best mode requirement is to prevent inventors from concealing the best way of practicing their invention while still obtaining patent protection for it. This ensures that the public receives the full benefit of the invention in exchange for the patent grant.
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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)
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.
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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MPEP 103-Right of Public To Inspect Patent Files and Some Application Files (3)
The Image File Wrapper (IFW) system is an electronic system used by the USPTO to store and process patent application files. Key points about the IFW system and its impact on public access include:
- Paper components of application files are scanned to create electronic image files
- For IFW applications, the electronic file is the Official file
- No access is granted to original paper documents used to create the IFW file
- Processing and examination are conducted using electronic images
- IFW files for patented applications, published applications, or applications referenced in published documents are accessible through Patent Center on the USPTO website
- All patent applications filed after June 30, 2003, have been scanned into the IFW system
The IFW system has made it easier for the public to access eligible patent application files online through Patent Center, eliminating the need to physically inspect paper files in many cases.
Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
For patent application information not available through Public PAIR, you can submit a request to the USPTO under the Freedom of Information Act (FOIA). Here’s how to proceed:
- Submit a written request to the USPTO’s FOIA Officer.
- Clearly identify the records you’re seeking.
- Explain why you believe the information should be disclosed if it’s not typically available to the public.
- Be prepared to pay any applicable fees for search and duplication.
- Wait for the USPTO to process your request and respond, which may take several weeks.
Note that certain information may still be withheld if it falls under FOIA exemptions or is protected by other statutes.
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 106-Control of Inspection by Assignee (1)
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
MPEP 120-Secrecy Orders (2)
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.
A secrecy order can remain in effect for a significant period. As stated in MPEP 120, “The secrecy order may remain in effect for the duration of the national emergency and six months thereafter and automatically expires at the end of that period.” However, it’s important to note that:
- The order can be renewed if necessary
- It can be terminated earlier if the reasons for its issuance no longer exist
- The total duration is subject to the provisions of 35 U.S.C. 181
For more information on secrecy order duration, visit: secrecy order duration.
MPEP 130-Examination of Secrecy Order Cases (3)
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.”
When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
When a Secrecy Order case is in condition for allowance, the prosecution is closed, but the patent is not issued. According to the MPEP, When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution.
This is in accordance with 37 CFR 5.3(c). The application remains in this state until the Secrecy Order is rescinded.
For more information on notice of allowability, visit: notice of allowability.
MPEP 140-Foreign Filing Licenses (8)
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP § 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
MPEP 150-Statements to DOE and NASA (1)
If an invention appears to the USPTO Director to have significant utility in the conduct of aeronautical and space activities, the applicant must file a written statement with the USPTO Director with the patent application or within 30 days after request by the Director.
The statement must be executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any NASA contract, as provided in 51 U.S.C. 20135(d):
“No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the ‘Director’) to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.”
MPEP 151 – Content of the Statements (2)
The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.
If an applicant does not have firsthand knowledge of whether the invention involved work under any contract or arrangement with the Atomic Energy Commission or NASA, but includes such information derived from others:
- The applicant’s statement should identify the source of this information, or
- The applicant’s statement could be accompanied by a supplemental declaration or oath regarding the contractual matters, made by the assignee or another person (like an employee) who has the requisite knowledge
MPEP 1900 – Protest (2)
A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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When submitting prior art with a patent protest, follow these guidelines:
- Include a copy of each prior art document relied upon.
- Provide an English language translation of any non-English language prior art.
- Highlight the relevant parts of the prior art documents.
According to MPEP 1901.03: “Copies of any prior art or other documents relied upon should be provided.” Additionally, the MPEP states: “A translation of the pertinent portions of any non-English language prior art should also be provided.” By following these guidelines, you ensure that the examiner can easily understand and consider the relevance of the submitted prior art to the patent application under protest.
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MPEP 1901.03 – How Protest Is Submitted (1)
When submitting prior art with a patent protest, follow these guidelines:
- Include a copy of each prior art document relied upon.
- Provide an English language translation of any non-English language prior art.
- Highlight the relevant parts of the prior art documents.
According to MPEP 1901.03: “Copies of any prior art or other documents relied upon should be provided.” Additionally, the MPEP states: “A translation of the pertinent portions of any non-English language prior art should also be provided.” By following these guidelines, you ensure that the examiner can easily understand and consider the relevance of the submitted prior art to the patent application under protest.
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MPEP 1901.04 – When Can The Protest Be Submitted (1)
A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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MPEP 200 – Types and Status of Application; Benefit and Priority (98)
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.
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.
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.
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.
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.
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.
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.
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 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.
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.
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.
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.
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.
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 deadline for filing an unintentionally delayed priority claim is the later of:
- Four months from the actual filing date of the later-filed application, or
- Sixteen months from the filing date of the prior application
This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.
As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’
- The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
- The petition fee as set forth in § 1.17(m); and
- A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
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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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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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The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior foreign application
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
Yes, a continuation application can claim priority to multiple parent applications under certain conditions. According to MPEP 201.07:
‘A continuation application may be filed as a continuation of an earlier application of the same applicant… The continuation application may be filed before the patenting or abandonment of or termination of proceedings on the prior application.’
This means that:
- The continuation must have at least one common inventor with the parent application(s).
- The continuation must be filed while at least one of the parent applications is still pending.
- The continuation cannot introduce new matter beyond what was disclosed in the parent application(s).
When claiming priority to multiple parents, the continuation essentially combines the disclosures of the parent applications, as long as they form a continuous chain of copending applications.
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The ‘statement of unintentional delay’ is a crucial component of a petition to accept an unintentionally delayed priority claim. According to MPEP 214.02:
The Director may require additional information where there is a question whether the delay was unintentional.
This statement must affirm that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. It’s important to note that:
- The USPTO requires an additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.
- The statement must be signed by a person who has sufficient knowledge of the facts to support the statement.
- Providing an inadequate or insufficient explanation may lead to a request for further information, which could delay the petition process.
Applicants should be prepared to provide a detailed account of the circumstances that led to the delay, ensuring that it covers the entire period of delay and demonstrates that the delay was truly unintentional.
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If a priority claim needs to be corrected after a patent has been issued, it must be done through a certificate of correction. The MPEP Section 213.04 states:
“If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.”
To obtain a certificate of correction, the patent owner must file a request with the USPTO, pay the required fee, and provide a statement explaining the error and how it occurred. The USPTO will then review the request and, if approved, issue a certificate of correction to be attached to the patent.
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Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
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There are three main types of national applications for patents in the United States:
- Nonprovisional applications filed under 35 U.S.C. 111(a)
- Provisional applications filed under 35 U.S.C. 111(b)
- International applications that have entered the national stage in the United States
As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”
For more information on international applications, visit: international applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
A continuation application can have significant implications for the patent term. Here are key points to understand:
- Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
- 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
- No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
- Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.
It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:
‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’
Key differences between provisional and non-provisional applications:
- Provisional applications have a simplified filing process and lower fees.
- They do not require formal patent claims or an oath or declaration.
- Provisional applications are not examined and automatically expire after 12 months.
- To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.
Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.
For more information on Non-provisional application, visit: Non-provisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.
This means that:
- A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
- A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
- Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.
For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:
- For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
- All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
- Substitute specification: The Office may require a substitute specification for preliminary amendments.
The MPEP states:
Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.
It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:
Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.
For more information on continuation application, visit: continuation application.
The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
Key points about restoration of the right of priority:
- It applies to both foreign priority claims and domestic benefit claims to provisional applications.
- The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
- The delay in filing the subsequent application must be unintentional.
- A petition for restoration of the right of priority must be filed.
The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.
For more information on PLTIA, visit: PLTIA.
For more information on unintentional delay, visit: unintentional delay.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
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The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:
“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”
The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
Yes, it is possible to file a delayed benefit claim in an abandoned application, particularly for provisional applications. The MPEP 211.04 states:
“Effective December 18, 2013, 35 U.S.C. 119(e)(1) no longer requires that the amendment containing the specific reference to the earlier filed provisional application be submitted during the pendency of the application. Therefore, a petition to revive is no longer required to add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned nonprovisional application filed on or after November 29, 2000.”
This means you can file a petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed provisional application in the abandoned nonprovisional application. This may be necessary to correct benefit claims in later-filed applications that claim benefit from the abandoned application.
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The assignment of a priority right can significantly impact patent applications. According to MPEP 216:
‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’
Key points about the assignment of priority rights:
- Priority rights can be transferred separately from the application itself.
- The assignment must be executed before filing the later application claiming priority.
- An assignment of the entire right, title, and interest in an application includes the right of priority.
- Partial assignments of priority rights are possible but must be clearly documented.
Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.
For more information on effective filing date, visit: effective filing date.
What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
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To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:
“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]. The inventorship has been corrected as requested.”
It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:
- For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
- For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)
The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”
The petition must include:
- The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
- A petition fee under 37 CFR 1.17(m)
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional
The Director may require additional information if there’s a question about whether the delay was unintentional.
For more information on 37 CFR 1.78, visit: 37 CFR 1.78.
For more information on petition fee, visit: petition fee.
For more information on unintentional delay, visit: unintentional delay.
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
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Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ¶ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:
- A clear statement requesting the deletion of the inventor(s)
- The name(s) of the inventor(s) to be deleted
- The filing date of the CPA
The MPEP provides a template for acknowledging such requests:
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].
In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:
- Make remarks of record in the new application referring to the affidavit or declaration.
- Include a copy of the original affidavit or declaration filed in the prior application.
The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.
It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:
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]. The inventorship has been corrected as requested.
This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
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]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
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When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
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To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:
- The application must be a design application.
- The prior application must be a nonprovisional application.
- The application must be filed before the earliest of:
- Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
- Abandonment of the prior application; or
- Termination of proceedings on the prior application.
As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”
For more information on continuation application, visit: continuation application.
For more information on CPA, visit: CPA.
For more information on Divisional application, visit: Divisional application.
For more information on filing requirements, visit: filing requirements.
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
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An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
- Formal abandonment by the applicant or their attorney/agent
- Failure to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, not filing a nonprovisional application within 12 months
Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.
For more information on patent abandonment, visit: patent abandonment.
The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:
The filing date of a continuation application is the filing date of the parent application.
However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:
- The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
- For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
- Each continuation in a chain reduces the effective patent term.
It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.
For more information on continuation application, visit: continuation application.
For more information on patent priority, visit: patent priority.
For more information on patent term, visit: patent term.
For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
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Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is that a continuation application is based on a prior nonprovisional application, while a provisional application is a standalone filing that can later be used as a priority document.
The MPEP specifically notes:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application.”
This guidance also applies to continuation applications. Provisional applications serve as temporary placeholders and do not undergo examination, while continuation applications are fully examined and build upon previously filed nonprovisional applications.
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What happens if a continuation application is filed after the parent application has been abandoned?
If a continuation application is filed after the parent application has been abandoned, it may still be entitled to the benefit of the filing date of the prior application. The MPEP states:
“Where the prior application has been abandoned, the petition to revive under 37 CFR 1.137 (a) or (b) must be filed in the prior application, or in a subsequent nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior application, if the prior nonprovisional application is not pending and claims the benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) of a provisional application.”
This means that even if the parent application is abandoned, you can still file a continuation application and potentially revive the parent application. However, specific procedures must be followed, including filing a petition to revive in the appropriate application.
For more information on reviving abandoned applications, refer to MPEP 711.
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The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
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Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:
- A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
- No additional amendment to the specification or application data sheet is required to claim benefit
- A CPA is considered to reference every application in the chain with the same application number
- Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA
The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).
For more information on benefit claims, visit: benefit claims.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on patent applications, visit: patent applications.
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
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For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:
“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”
This means that when making a benefit claim, you must explicitly state whether the current application is a:
- Continuation
- Divisional
- Continuation-in-part
of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.
Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.
For more information on divisional, visit: divisional.
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
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How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
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New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
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The timeframe for receiving a Notice of Allowance (PTOL-85) after a Notice of Allowability (Form PTOL-37) is generally within three months. However, if you don’t receive the Notice of Allowance within this period, it may be appropriate to make a status inquiry.
The MPEP states: A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination.
(MPEP 203.08)
However, the MPEP also notes an exception: As an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.
If you haven’t received your Notice of Allowance after three months from receiving the Notice of Allowability, it’s advisable to check the status of your application through Patent Center or contact the Application Assistance Unit.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:
“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
This ensures that the examiner can consider the previously submitted evidence in the context of the new application.
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:
Any request to add an inventor must be in the form of a request under 37 CFR 1.48.
To add a new inventor:
- File a request under 37 CFR 1.48 to correct the inventorship.
- Include a statement from the new inventor agreeing to the addition.
- Pay any required fees.
- Provide an oath or declaration from the new inventor.
Failure to follow these steps may result in the inventorship remaining the same as in the prior application.
For more information on CPA, visit: CPA.
The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.
The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:
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]. The inventorship has been corrected as requested.
In this acknowledgment:
- [1] refers to the name(s) of the inventor(s) requested to be deleted
- [2] indicates the filing date of the CPA
This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on USPTO acknowledgment, visit: USPTO acknowledgment.
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
- For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.
According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.
Important considerations:
- Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
- If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
- Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
- In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.
Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.
For more information on ADS, visit: ADS.
For more information on CPA, visit: CPA.
For more information on prior art, visit: prior art.
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
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An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
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Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
According to MPEP 203.05, you have 12 months from the filing date of your provisional application to file a nonprovisional application. The MPEP states:
“in the case of a provisional application, no later than 12 months after the filing date of the provisional application”
If you don’t file a nonprovisional application within this timeframe, your provisional application will be considered abandoned. This 12-month period is set by 35 U.S.C. 111(b)(5).
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How does a provisional application affect public disclosure of an invention?
Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’
This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:
- The confidentiality only applies to the USPTO’s handling of your application.
- If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
- The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.
Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.
For more information on provisional application, visit: provisional application.
For more information on public disclosure, visit: public disclosure.
Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:
- The application repeats a substantial portion of a prior application.
- The application adds disclosure not presented in the prior application.
- The application names the inventor or at least one joint inventor named in the prior application.
The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.
However, examiners are advised to use this determination cautiously: This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):
- With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
- After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.
The MPEP ¶ 2.32 states:
Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.
If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required.
(MPEP § 211)
However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:
- For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
- For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.
For more information on petition requirements, visit: petition requirements.
If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:
“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”
This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:
“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”
This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.
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If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:
- For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
- For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS
This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:
The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.
It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.
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37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:
- It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
- The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The prior-filed application must contain the certified copy and be identified as such.
- This provision can simplify the process of perfecting priority claims in related applications.
The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
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Can a priority claim be corrected after the patent has been issued?
Yes, it is possible to correct a priority claim after a patent has been issued, but the process is more complex and limited compared to correcting a priority claim in a pending application.
According to MPEP 214.02: ‘For a correction of foreign priority claim after issuance of a patent, see MPEP § 216.01.’
To correct a priority claim in an issued patent, the following steps are typically required:
- File a petition for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Pay the required fee.
- Provide a statement that the error occurred without deceptive intent.
- Submit evidence to support the correction, such as a certified copy of the priority document.
It’s important to note that the scope for correcting priority claims in issued patents is more limited than in pending applications. The correction must not involve a change that would broaden the scope of the claims of the issued patent.
For more detailed information on correcting foreign priority claims after patent issuance, refer to MPEP § 216.01.
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Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?
Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:
“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”
However, it’s important to note that for a CIP application:
- New matter in the CIP will only get the benefit of the CIP’s filing date.
- Matter disclosed in the prior application(s) can claim the earlier filing date(s).
- Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.
For more details, see MPEP 211.01 and MPEP 201.08.
To learn more:
- continuation-in-part
- CIP
- multiple prior applications
- 35 U.S.C. 120
- 35 U.S.C. 121
- 35 U.S.C. 365(c)
- 35 U.S.C. 386(c)
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Can I file a provisional application in a language other than English?
Yes, you can file a provisional application in a language other than English. However, there are important considerations:
- The USPTO accepts provisional applications in any language.
- An English translation is not required at the time of filing.
- If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.
The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.
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To file a continuation-in-part (CIP) application, several requirements must be met according to MPEP 201.08 and 37 CFR 1.78:
- The CIP must be filed while the prior nonprovisional application is still pending (before patenting, abandonment, or termination of proceedings).
- The CIP must claim benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The CIP must contain a specific reference to the prior application, including the application number.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
- The CIP must have at least one common inventor with the prior application.
It’s important to note that a CIP can only be filed under 37 CFR 1.53(b) and cannot be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
For more information on filing requirements, visit: filing requirements.
For more information on USPTO, visit: USPTO.
What is the filing deadline for a continuation application?
A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. 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.”
Key points to remember:
- There is no specific time limit for filing a continuation as long as the parent application is still pending.
- The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
- If you want to file after the parent is patented, you must file a reissue application instead.
It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.
For more information on continuation application, visit: continuation application.
For more information on filing deadline, visit: filing deadline.
MPEP 200 – Types and Status of Application; Benefit and Priority Claims (19)
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.
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)
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.
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.
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.
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).”
Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
The effective filing date for a claimed invention is determined as follows:
- The actual filing date of the application containing the claim, or
- The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit
The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)
According to MPEP 203.05, there are four main reasons for patent application abandonment:
- Formal abandonment by the applicant or their representative
- Failure of the applicant to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, the passage of 12 months from the filing date
The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application
.
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:
1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.
2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.
3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.
4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.
5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.
As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:
1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.
2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.
The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”
For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
MPEP 2000 – Duty Of Disclosure (3)
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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An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered.
The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.
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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 2003 – Disclosure — When Made (1)
An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered.
The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.
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MPEP 201 – Types of Applications (42)
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.
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.
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.
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.
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.
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.
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 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.
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.
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 continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
There are three main types of national applications for patents in the United States:
- Nonprovisional applications filed under 35 U.S.C. 111(a)
- Provisional applications filed under 35 U.S.C. 111(b)
- International applications that have entered the national stage in the United States
As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”
For more information on international applications, visit: international applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:
‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’
Key differences between provisional and non-provisional applications:
- Provisional applications have a simplified filing process and lower fees.
- They do not require formal patent claims or an oath or declaration.
- Provisional applications are not examined and automatically expire after 12 months.
- To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.
Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.
For more information on Non-provisional application, visit: Non-provisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.
This means that:
- A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
- A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
- Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.
For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:
- For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
- All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
- Substitute specification: The Office may require a substitute specification for preliminary amendments.
The MPEP states:
Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.
It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:
Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.
For more information on continuation application, visit: continuation application.
The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:
“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”
The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:
“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]. The inventorship has been corrected as requested.”
It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:
- A clear statement requesting the deletion of the inventor(s)
- The name(s) of the inventor(s) to be deleted
- The filing date of the CPA
The MPEP provides a template for acknowledging such requests:
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].
In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:
- Make remarks of record in the new application referring to the affidavit or declaration.
- Include a copy of the original affidavit or declaration filed in the prior application.
The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.
It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:
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]. The inventorship has been corrected as requested.
This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
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]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:
- The application must be a design application.
- The prior application must be a nonprovisional application.
- The application must be filed before the earliest of:
- Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
- Abandonment of the prior application; or
- Termination of proceedings on the prior application.
As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”
For more information on continuation application, visit: continuation application.
For more information on CPA, visit: CPA.
For more information on Divisional application, visit: Divisional application.
For more information on filing requirements, visit: filing requirements.
The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:
The filing date of a continuation application is the filing date of the parent application.
However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:
- The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
- For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
- Each continuation in a chain reduces the effective patent term.
It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.
For more information on continuation application, visit: continuation application.
For more information on patent priority, visit: patent priority.
For more information on patent term, visit: patent term.
Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:
1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.
2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.
The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”
For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.
Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:
- A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
- No additional amendment to the specification or application data sheet is required to claim benefit
- A CPA is considered to reference every application in the chain with the same application number
- Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA
The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).
For more information on benefit claims, visit: benefit claims.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on patent applications, visit: patent applications.
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:
“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
This ensures that the examiner can consider the previously submitted evidence in the context of the new application.
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:
Any request to add an inventor must be in the form of a request under 37 CFR 1.48.
To add a new inventor:
- File a request under 37 CFR 1.48 to correct the inventorship.
- Include a statement from the new inventor agreeing to the addition.
- Pay any required fees.
- Provide an oath or declaration from the new inventor.
Failure to follow these steps may result in the inventorship remaining the same as in the prior application.
For more information on CPA, visit: CPA.
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.
The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:
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]. The inventorship has been corrected as requested.
In this acknowledgment:
- [1] refers to the name(s) of the inventor(s) requested to be deleted
- [2] indicates the filing date of the CPA
This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on USPTO acknowledgment, visit: USPTO acknowledgment.
An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
How does a provisional application affect public disclosure of an invention?
Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’
This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:
- The confidentiality only applies to the USPTO’s handling of your application.
- If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
- The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.
Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.
For more information on provisional application, visit: provisional application.
For more information on public disclosure, visit: public disclosure.
Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:
- The application repeats a substantial portion of a prior application.
- The application adds disclosure not presented in the prior application.
- The application names the inventor or at least one joint inventor named in the prior application.
The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.
However, examiners are advised to use this determination cautiously: This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):
- With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
- After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.
The MPEP ¶ 2.32 states:
Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.
To file a continuation-in-part (CIP) application, several requirements must be met according to MPEP 201.08 and 37 CFR 1.78:
- The CIP must be filed while the prior nonprovisional application is still pending (before patenting, abandonment, or termination of proceedings).
- The CIP must claim benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The CIP must contain a specific reference to the prior application, including the application number.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
- The CIP must have at least one common inventor with the prior application.
It’s important to note that a CIP can only be filed under 37 CFR 1.53(b) and cannot be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
For more information on filing requirements, visit: filing requirements.
For more information on USPTO, visit: USPTO.
What is the filing deadline for a continuation application?
A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. 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.”
Key points to remember:
- There is no specific time limit for filing a continuation as long as the parent application is still pending.
- The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
- If you want to file after the parent is patented, you must file a reissue application instead.
It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.
For more information on continuation application, visit: continuation application.
For more information on filing deadline, visit: filing deadline.
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 (4)
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.”
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
MPEP 203 – Status of Applications (4)
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.
Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.
According to MPEP 203.05, there are four main reasons for patent application abandonment:
- Formal abandonment by the applicant or their representative
- Failure of the applicant to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, the passage of 12 months from the filing date
The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application
.
An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
- Formal abandonment by the applicant or their attorney/agent
- Failure to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, not filing a nonprovisional application within 12 months
Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.
For more information on patent abandonment, visit: patent abandonment.
MPEP 2100 – Patentability (243)
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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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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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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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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No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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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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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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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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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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MPEP 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 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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“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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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 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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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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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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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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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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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 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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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:
“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:
- If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
- Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
- However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.
For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.
It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.
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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 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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According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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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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According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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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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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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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
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The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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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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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
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Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
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To determine whether your patent application is subject to AIA (America Invents Act) or pre-AIA laws, you need to consider the effective filing date of your claimed invention. According to MPEP 2159:
“Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”
To determine which laws apply:
- Identify the effective filing date of your claimed invention.
- If the effective filing date is on or after March 16, 2013, your application is subject to AIA laws.
- If the effective filing date is before March 16, 2013, your application is subject to pre-AIA laws.
- For applications with multiple claims, if any claim has an effective filing date on or after March 16, 2013, the entire application is subject to AIA laws.
Consult with a patent attorney or agent for a precise determination, as the effective filing date can be affected by factors such as priority claims, continuation applications, and the specific content of the application.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
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The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
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The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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The concept of “clear improvement” in MPEP § 2106.06(b) relates to the Alice/Mayo test by potentially allowing claims to bypass parts of the test. The MPEP states:
“Although the Federal Circuit held these claims eligible at Step 2A as not being directed to abstract ideas, it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being directed to an abstract idea.“
This means that if a claim shows a clear improvement to technology or computer functionality, it might be found eligible without going through the entire Alice/Mayo test. The claim could be considered eligible at Pathway A (streamlined analysis) or at Step 2A of the Alice/Mayo test, depending on the examiner’s assessment of the improvement.
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The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
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Yes, there are exceptions to the rule against using trademarks or trade names as claim limitations. The MPEP 2173.05(u) states:
“Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982) states that a trademark or trade name is permissible in a claim to identify the source of goods.“
This exception allows for the use of trademarks or trade names in claims under specific circumstances:
- When used to identify the source of goods, rather than the goods themselves.
- If the trademark or trade name is used in conjunction with the trademark’s generic terminology.
- When the use does not affect the clarity or definiteness of the claim.
However, it’s important to note that even when identifying the source, care should be taken to ensure the claim remains clear and definite.
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Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
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‘Mental processes’ are concepts that can be performed in the human mind or with the aid of pen and paper. According to MPEP 2106.04(a)(2):
The courts consider a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.
Mental processes include:
- Observations
- Evaluations
- Judgments
- Opinions
Importantly, claims can recite a mental process even if they are performed on a computer. The MPEP states: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”
However, claims that cannot practically be performed in the human mind do not recite a mental process. For example, a claim to detecting suspicious activity by using network monitors and analyzing network packets would not be considered a mental process.
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An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states:
“A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or the time the invention was made for applications or patents subject to pre-AIA law.”
This means that the prior art must provide enough detail for someone skilled in the field to reproduce the invention without excessive difficulty.
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An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
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While using trademarks or trade names in patent claims can be problematic, they can be used more freely in the patent specification. Here are guidelines for proper use:
- Use the trademark or trade name in conjunction with the generic terminology.
- Indicate that the term is a trademark, e.g., by using the ™ or ® symbol.
- Clarify the source of the trademark or trade name.
- Provide a clear description of the product or material associated with the trademark.
The MPEP 608.01(v) provides guidance on the use of trademarks in patent applications:
“If the product to which the trademark refers is set forth in such language that its identity is clear, the identification is sufficient. Where the product is set forth in the specification in language which is not clear, the examiner should require the applicant to use language which is clear.“
By following these guidelines, you can use trademarks or trade names in the specification while maintaining clarity and avoiding potential indefiniteness issues.
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What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
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When claiming a genus in a patent application, working examples play an important role in demonstrating enablement. The MPEP 2164.02 provides guidance on this issue:
“For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation.”
Key points about working examples and genus claims:
- Representative examples can support enablement for the entire genus
- The examples should be considered along with the level of skill in the art and the specification’s information
- Proof of enablement for other members of the genus may be required if the examiner provides adequate reasons
- The examiner must establish that a person skilled in the art could not use the genus as a whole without undue experimentation
It’s important to note that the number of examples needed depends on the predictability of the art and the breadth of the claims.
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What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
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What is the difference between a negative limitation and a disclaimer in patent claims?
While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:
Negative Limitations:
- Are part of the original claim language
- Explicitly state what is not included in the claimed invention
- Must have support in the original disclosure
- Example: “A composition free of copper”
Disclaimers:
- Are typically added after the original filing
- Used to overcome prior art rejections or avoid double patenting
- Can sometimes introduce limitations not originally disclosed
- Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”
The MPEP 2173.05(i) focuses primarily on negative limitations, stating:
“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”
This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.
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Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
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Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
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When a claim covers multiple structures or compositions, anticipation can occur if any one of those structures or compositions is known in the prior art. The MPEP 2131 cites a Federal Circuit case:
When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.
(Brown v. 3M)
This means that for a claim covering multiple options, finding just one of those options in the prior art can be sufficient for an anticipation rejection.
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The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
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35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
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To file a petition to accept an unintentionally delayed benefit claim, you should:
- File the petition under 37 CFR 1.78
- Explain the reasons for the delay and demonstrate that it was unintentional
- Pay the required petition fee
- Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)
As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”
For more detailed information on filing these petitions, refer to MPEP § 211.04.
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
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Working examples play a significant role in determining enablement for patent applications, although they are not always required. According to MPEP 2164.06:
“The presence of a working example in the specification is not always necessary to satisfy the enablement requirement. However, where a working example is necessary for enablement, the quantity of experimentation required must be determined.”
Key points about working examples:
- They can demonstrate the practicality and operability of the invention
- They provide concrete guidance on how to make and use the invention
- Their necessity depends on the nature of the invention and the state of the art
- In unpredictable arts, working examples may be more critical for enablement
- The absence of working examples may be overcome by other forms of disclosure
Examiners consider working examples as part of the overall assessment of enablement. While helpful, the lack of working examples does not automatically mean the application fails to meet the enablement requirement if other factors support enablement.
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How does the preamble affect claim interpretation in patent applications?
The preamble can significantly affect claim interpretation in patent applications. According to MPEP 2111.02, the effect of the preamble on claim scope can be summarized as follows:
- If the body of the claim fully and intrinsically sets forth the complete invention, and the preamble merely states the purpose or intended use, the preamble is generally not considered a limitation.
- However, if the preamble is “necessary to give life, meaning, and vitality” to the claim, it must be construed as a limitation.
- The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case.
The MPEP states: “Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” This means that if the preamble introduces essential structure or steps, or if it’s necessary to understand the claim as a whole, it will be considered limiting.
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Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
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The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).
The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).
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The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states:
“The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).”
However, the acceptability of the term depends on whether it can be interpreted by a person of ordinary skill in the art with reasonable certainty. If the term’s meaning is reasonably ascertainable in the context of the invention, it may be acceptable. Otherwise, it could render the claim indefinite.
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Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements:
- Complete Conception: There must be evidence of complete conception by another person. The MPEP states:
Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
- Communication: The complete conception must be communicated to the alleged deriver. The MPEP clarifies:
Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.
Importantly, the party alleging derivation does not need to prove certain elements. The MPEP notes:
- An actual reduction to practice is not required to show derivation.
- The derivation does not need to be of public knowledge.
- The site of derivation does not need to be in the United States.
When evaluating evidence of derivation, patent examiners and the courts will consider these factors to determine if a rejection under pre-AIA 35 U.S.C. 102(f) is appropriate.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01:
“Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.”
The MPEP emphasizes that many research tools, such as gas chromatographs and screening assays, have clear, specific, and unquestionable utility. The key is to distinguish between inventions with specifically identified substantial utility and those whose asserted utility requires further research to identify or confirm.
For intermediate products, the MPEP states that a claim to an intermediate product for use in making a final product that has no specific, substantial, and credible utility would not meet the utility requirement. The focus should be on whether the claimed invention has a real-world use that provides an immediate benefit to the public.
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Joint inventorship occurs when an invention is made by two or more persons jointly. According to 35 U.S.C. 116, joint inventors can apply for a patent even if:
- They did not physically work together or at the same time
- Each did not make the same type or amount of contribution
- Each did not contribute to every claim of the patent
The MPEP states: “A person who shares in the conception of a claimed invention is a joint inventor of that invention.”
This means that contributing to the inventive concept is crucial for joint inventorship.
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No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
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Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
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Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:
“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”
However, the MPEP also warns:
“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”
Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.
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According to the MPEP, non-limiting examples of claims that are not directed to any of the statutory categories include:
- Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations
- Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave
- Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA)
The MPEP further clarifies: “Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture, and is not composed of matter such that it would qualify as a composition of matter.“
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Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“
The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.
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What are “narrow and broader ranges” in the same claim?
“Narrow and broader ranges” in the same claim refer to situations where a patent claim includes both a specific value or narrow range and a broader range that encompasses the narrow range. The MPEP 2173.05(c) addresses this issue:
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”
For example, a claim might state “a length of 5 to 25 centimeters, preferably 15 to 20 centimeters.” This practice can lead to indefiniteness because:
- It’s unclear which range is actually being claimed
- The word “preferably” doesn’t clearly define the claim scope
- It may create uncertainty about the intended protection
Examiners must carefully evaluate such claims to ensure they meet the definiteness requirement under 35 U.S.C. 112(b).
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When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
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What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
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The “Art Recognized Suitability for an Intended Purpose” doctrine is a legal principle in patent law that relates to the obviousness of an invention. It states that selecting a known material or component for its recognized suitability for an intended use can support a prima facie case of obviousness.
As stated in MPEP 2144.07:
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” in the landmark case of Sinclair & Carroll Co. v. Interchemical Corp.
This doctrine suggests that if a person of ordinary skill in the art would recognize a material or component as suitable for a particular purpose, using that material or component for that purpose may be considered obvious and thus potentially unpatentable.
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A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement.
MPEP 2166 provides a form paragraph for rejecting single means claims:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
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Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may prevent applicant from obtaining a patent.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
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The best mode requirement is one of the three requirements for a patent specification under 35 U.S.C. 112(a). It requires that the inventor disclose the best way of carrying out the invention that they know of at the time of filing the patent application.
The MPEP states:
“[The specification] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
It’s important to note that the best mode requirement is separate and distinct from the enablement requirement. As mentioned in the MPEP, citing In re Newton: “Best mode is a separate and distinct requirement from the enablement requirement.”
The purpose of the best mode requirement is to prevent inventors from concealing the best way of practicing their invention while still obtaining patent protection for it. This ensures that the public receives the full benefit of the invention in exchange for the patent grant.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:
“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
Similarly, for domestic priority under 35 U.S.C. 120:
“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”
In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.
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35 U.S.C. 102(a)(2) applies to certain patent documents as prior art. The MPEP states:
“U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention.”
Key points to understand:
- The reference’s effectively filed date must be before the claimed invention’s effective filing date
- The reference can be prior art even if its publication date is after the claimed invention’s effective filing date
- 35 U.S.C. 102(d) determines when subject matter in these documents was “effectively filed”
Exceptions to 102(a)(2) prior art are provided in 35 U.S.C. 102(b)(2), including disclosures of the inventor’s own work and common ownership scenarios.
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An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
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The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“The language ‘in this country’ in pre-AIA 35 U.S.C. 102(b) does not include other WTO or NAFTA member countries, but includes any State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
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Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains:
“[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.”
This means that even if an invention is used secretly, if it’s being commercially exploited, it may still be considered a public use. However, the mere fact that an invention is used internally by the inventor or their company to develop future products that are never sold is not sufficient by itself to create a public use bar.
It’s important to note that “public” is not necessarily synonymous with “non-secret.” The determination of whether a use is public depends on various factors, including the nature of the activity, public access, confidentiality obligations, and commercial exploitation.
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In patent law, machines and manufactures are two distinct categories of statutory subject matter. The MPEP provides definitions for both:
Machine: “A machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This category ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’“
Manufacture: “A manufacture is ‘a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.’ … manufactures are articles that result from the process of manufacturing, i.e., they were produced ‘from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’“
The key difference is that a machine is typically a device with moving parts or circuitry that performs a function, while a manufacture is a tangible article that has been produced or modified by human intervention. Both categories require physical or tangible form.
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In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04:
“‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same.”
This means that even if an application and a reference have one or more inventors in common, the reference can still be considered “by another” if the inventive entities are not identical.
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An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
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Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
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While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections:
- On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.
- Public Use: Involves the invention being used in a way that makes it accessible to the public, even if not commercially.
Key differences include:
- Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
- Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
- Purpose: ‘On sale’ focuses on commercial exploitation, while ‘public use’ is more about the invention being accessible or observable by the public.
Both ‘on sale’ and ‘public use’ can trigger statutory bars to patentability, so inventors should be cautious about any activities that might fall into either category before filing a patent application.
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The AIA provides specific guidance for determining the effective filing date of claimed inventions in reissue applications:
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
This means:
- The effective filing date for a claimed invention in a reissue application is treated as if the claim was part of the original patent being reissued.
- This applies even if the claim is new or modified in the reissue application.
- The purpose is to maintain continuity with the original patent and prevent the introduction of intervening prior art solely due to the reissue process.
It’s important to note that while this provision helps determine the effective filing date, reissue applications must still comply with other statutory requirements, including those related to broadening reissues and the two-year filing deadline for broadening reissues.
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The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
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For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
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The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter:
“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’”
This means that while inherent properties or characteristics of an invention can contribute to satisfying the written description requirement, they must be necessarily present and recognizable to those skilled in the art based on the original disclosure. Applicants should be cautious about relying solely on inherency and should strive to provide explicit description whenever possible.
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
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“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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Judicial exceptions in patent law are categories of subject matter that the courts have found to be outside the four statutory categories of invention. The MPEP defines judicial exceptions as:
“abstract ideas, laws of nature and natural phenomena (including products of nature).”
These exceptions are not patentable on their own because they are considered the “basic tools of scientific and technological work.” However, applications of these exceptions may be eligible for patent protection if they meet certain criteria, such as integrating the exception into a practical application or including additional elements that amount to significantly more than the exception itself.
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For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
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The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).
The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.
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An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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The category of abstract ideas “having no particular concrete or tangible form” is a catch-all category for abstract ideas that don’t fit neatly into the other three categories (mathematical concepts, certain methods of organizing human activity, and mental processes) as described in MPEP 2106.04(a). While the MPEP doesn’t provide an exhaustive list, it does offer some examples:
- An idea ‘of itself’: This includes ideas standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.”
- Certain arrangements of printed matter: For example, a set of dice with printed matter on the faces.
- Data recognition and storage: As exemplified in Content Extraction and Transmission LLC v. Wells Fargo Bank.
The MPEP states: “The courts have declined to define abstract ideas, other than by example, so the above-identified concepts should be understood as examples and not as a definitive or exhaustive listing.“
It’s important to note that this category is flexible and can accommodate new types of abstract ideas as they are identified by the courts. When evaluating a claim for patent eligibility, examiners are instructed to consider whether the claim recites an abstract idea, regardless of whether it fits neatly into one of the enumerated categories.
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When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
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The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:
“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”
This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.
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The In re Elsner case, as discussed in MPEP 2121.03, is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states:
“The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar.”
This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant.
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Glossaries play a crucial role in ensuring adequate definition of claim terms in patent applications. The MPEP 2173.03 specifically mentions the importance of glossaries:
“Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims.”
Glossaries serve several important functions:
- They provide clear definitions for claim terms
- They help establish antecedent basis in the specification
- They assist examiners and the public in understanding the claimed invention
- They can help prevent rejections based on indefiniteness
By including a glossary in the specification, inventors can proactively define their terms, reducing the likelihood of misinterpretation or disputes over claim scope during examination or potential litigation.
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If a patent application fails to set forth any mode of the invention, it is considered a failure of enablement, not a best mode violation. According to MPEP 2165.02:
“The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement.”
This means that if an application doesn’t describe any way to make and use the invention, it fails the enablement requirement. The best mode requirement only comes into play when at least one mode is disclosed, but not necessarily the best one known to the inventor.
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“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
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Using a trademark as a generic term in a patent claim can have significant negative consequences:
- It may render the claim indefinite under 35 U.S.C. 112(b).
- It constitutes improper use of the trademark.
- It can potentially lead to the loss of trademark rights.
The MPEP 2173.05(u) states:
“In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”
This guidance emphasizes the importance of avoiding the use of trademarks as generic terms in patent claims to maintain both claim clarity and trademark protection.
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The transitional phrase “comprising” in a patent claim is inclusive and open-ended. According to the MPEP, The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
This means that a claim using “comprising” allows for the inclusion of additional elements or steps beyond those explicitly stated in the claim. For example, a claim for a device “comprising A, B, and C” would cover devices that include A, B, and C, as well as devices that include A, B, C, and additional elements.
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The main difference between 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the types of prior art they cover:
- 35 U.S.C. 102(a)(1) covers public disclosures, including patents, printed publications, public use, sales, or other public availability of the claimed invention before the effective filing date.
- 35 U.S.C. 102(a)(2) specifically covers U.S. patents, U.S. patent application publications, and international patent applications published under the Patent Cooperation Treaty, which have an effectively filed date before the effective filing date of the claimed invention.
As stated in the MPEP, “First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.” The same process is then applied for 102(a)(2) and its exceptions under 102(b)(2).
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The principle of claim differentiation is an important tool in claim interpretation. According to the MPEP:
This principle is based on the assumption that each claim in a patent has a different scope. Therefore:
- If a dependent claim includes a specific limitation, it’s presumed that the independent claim it depends from does not include that limitation.
- This presumption can be used to interpret the broader scope of the independent claim.
However, it’s important to note that this is a rebuttable presumption. The MPEP clarifies:
“This presumption is rebuttable if other evidence in the specification or prosecution history clearly indicates that the claims should be interpreted differently.”
Examiners and courts use this principle as one of several tools to understand the intended scope of patent claims.
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Can an inventor’s testimony alone prove conception in a patent case?
While an inventor’s testimony is important, it is generally not sufficient on its own to prove conception in a patent case. The MPEP 2138.04 states:
“An inventor’s testimony, standing alone, is insufficient to prove conception, as some form of corroboration is required.”
This requirement for corroboration serves several purposes:
- It helps verify the accuracy of the inventor’s recollection
- It protects against fraudulent claims
- It ensures that the conception date is supported by objective evidence
Corroborating evidence can come in various forms, such as contemporaneous documents, witness testimony, or physical exhibits. The key is that there must be some independent evidence that supports the inventor’s claim of conception beyond their own statement.
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Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter:
“An inventor’s private use of the invention, for his or her own enjoyment is not a public use.”
This principle is illustrated in the case of Moleculon Research Corp. v. CBS, Inc., where the court held that an inventor showing his inventive puzzle to close friends in his dorm room and later discussing it with his company president did not result in a “public use.” The key factor was that the inventor retained control over the invention.
However, it’s important to note that if the private use involves commercial exploitation or if the invention becomes accessible to the public without restrictions, it may still be considered a public use. The determination often depends on the specific circumstances and the level of control the inventor maintains over the invention.
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How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
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In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.”
The court upheld an obviousness rejection, stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” This case reinforces the principle that the material worked upon (in this case, adhesive tape) does not necessarily impart patentability to an apparatus claim if it doesn’t result in a structural difference.
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The MPEP 2106.04(d)(2) provides examples of claims that do not integrate a judicial exception through treatment. These include:
- Insignificant extra-solution activity: “For example, a claim reciting the step of ‘administering a drug providing 6-thioguanine to a patient’ (without more) is not a meaningful limitation.”
- General treatment: “For example, consider a claim that recites mentally analyzing information to identify if a patient has a genotype associated with poor metabolism of beta blocker medications and then ‘administering a lower than normal dosage of a beta blocker medication to a patient identified as having the poor metabolizer genotype.’”
- Field of use limitations: “For instance, a claim that recites ‘administering a suitable medication to a patient’ is not a meaningful limitation because it does not specify what the medication is or how it is administered.”
These examples illustrate that treatments that are too general, lack specificity, or are merely incidental to the core of the invention may not be sufficient to integrate a judicial exception into a practical application.
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What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
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The phrase “The Invention Was Made in This Country” refers to a specific requirement in pre-AIA (pre-America Invents Act) U.S. patent law. According to MPEP 2138.02, this requirement is related to prior art under pre-AIA 35 U.S.C. 102(g).
The MPEP states: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.” This means that for an invention to be considered prior art under this section, it must have been made within the United States.
It’s important to note that this requirement has limited applicability to applications subject to the first inventor to file (FITF) provisions of the AIA. For current applications, refer to MPEP § 2159 et seq. to determine if this rule applies.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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What is the significance of In re Leshin in MPEP 2144.07?
The case In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) is cited in MPEP 2144.07 as an important precedent. The section states:
“Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, was held to be nonpatentable.”
This case reinforces the principle that selecting a known material based on its suitability for an intended use is generally not patentable. It demonstrates that even when an inventor chooses a specific type of plastic for a container, if that plastic was known and suitable for such use before the invention, the selection alone is not enough to establish patentability. This case helps patent examiners and practitioners understand how to apply the concept of “art recognized suitability” in evaluating the obviousness of material choices in inventions.
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The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
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How does public accessibility affect the status of a printed publication in patent law?
Public accessibility is a crucial factor in determining whether a document qualifies as a printed publication under patent law. According to MPEP 2152.02(b):
“The public accessibility of the material is the key inquiry in determining whether a reference qualifies as a ‘printed publication’ bar under 35 U.S.C. 102(a)(1).”
This means that:
- The material must be accessible to the public or to persons interested and ordinarily skilled in the subject matter.
- There must be no reasonable expectation of secrecy.
- The date of public accessibility is considered the publication date.
For example, a thesis in a university library or a paper presented at a conference may be considered publicly accessible if it’s available to those interested in the field without restriction.
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The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
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Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP:
- Show that the Office erred in its factual findings
- Provide evidence to demonstrate nonobviousness
- Present arguments pointing out specific distinctions that render the claims patentable
- Submit rebuttal evidence, including evidence of secondary considerations
The MPEP states: “37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action.”
Applicants should provide a reasoned statement explaining why they believe the Office has erred in its factual findings or legal conclusions. Mere statements that the Office has not established a prima facie case of obviousness without substantive arguments are generally not considered adequate to rebut the rejection.
When presenting rebuttal evidence, applicants should explain how the evidence demonstrates nonobviousness, such as unexpected results or long-felt but unsolved needs.
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The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
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Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.
However, this is subject to specific conditions, such as common assignee, applicant, or inventor.
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A preamble is considered limiting when it gives life, meaning, and vitality to the claim or if it recites essential structure or steps. According to MPEP 2111.02:
“If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”
This principle is illustrated in cases like Pitney Bowes, Inc. v. Hewlett-Packard Co. and Jansen v. Rexall Sundown, Inc., where the courts found the preambles to be limiting because they gave essential meaning to the claims.
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How does the AIA define “public use” for patent purposes?
The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c):
“Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date of the claimed invention.”
The MPEP further clarifies that public use under the AIA is defined as any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public. This definition emphasizes the accessibility of the invention to the public, rather than the inventor’s control over the invention or their intent to keep it secret.
It’s important to note that the AIA’s definition of public use is broader than under pre-AIA law, as it includes uses that may not have been visible or known to the public, as long as the use was not actively kept secret.
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The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
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Treatment or prophylaxis limitations are a specific type of meaningful limitation that can render a claim patent-eligible. These limitations are particularly relevant in medical and biotechnology fields.
MPEP 2106.05(e) notes:
“With respect to treatment or prophylaxis limitations, such as the immunization step in Classen, examiners should note that the other meaningful limitations consideration overlaps with the particular treatment or prophylaxis consideration that is evaluated in Step 2A Prong Two (see MPEP § 2106.04(d)(2)).”
This overlap means that treatment or prophylaxis steps can serve as both meaningful limitations and evidence of integration into a practical application. These limitations are often concrete, specific actions that apply the judicial exception in a meaningful way, transforming abstract ideas or natural phenomena into patent-eligible subject matter.
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35 U.S.C. 112(f) (formerly 35 U.S.C. 112, sixth paragraph) has a specific relationship to the doctrine of equivalents. MPEP 2186 explains:
“35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permit means- (or step-) plus-function limitations in claims to combinations, ‘with the proviso that application of the broad literal language of such claims must be limited to only those means that are ‘equivalent’ to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.’”
In essence, 35 U.S.C. 112(f) applies the doctrine of equivalents in a restrictive manner to means-plus-function claim limitations, limiting their scope to equivalents of the structures disclosed in the specification.
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The interpretation of “equivalents” in means-plus-function claims can vary depending on how the element is described in the supporting specification. According to MPEP 2184:
“Generally, an ‘equivalent’ is interpreted as embracing more than the specific elements described in the specification for performing the specified function, but less than any element that performs the function specified in the claim.”
The scope of equivalents can range from broad to narrow:
- If the disclosure is broad, it may encompass any structure, material, or act that performs the claimed function.
- If the specification describes the invention only in the context of a specific structure, material, or act, the scope of equivalents may be constricted to virtually only the disclosed embodiments.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states:
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
This case reinforces the principle that the inclusion of the material or article worked upon by an apparatus does not automatically confer patentability. Patent examiners and practitioners should focus on the structural elements of the claimed apparatus rather than the output it produces.
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The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
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How does the In re Fisher case relate to the predictability of art and enablement?
The In re Fisher case is significant in understanding the relationship between the predictability of art and enablement. According to MPEP 2164.03:
“In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) states: ‘The scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.’”
This case established that:
- The breadth of claims must be reasonably correlated to the scope of enablement in the specification.
- In unpredictable arts, broad claims may not be enabled by a limited disclosure.
- The more unpredictable the art, the more specific enablement is necessary.
This principle guides patent examiners and applicants in assessing whether a specification provides sufficient enablement, especially in less predictable fields like biotechnology and chemistry.
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The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:
“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”
This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.
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The MPEP provides several examples of claims that do not recite abstract ideas:
- A method for calculating an absolute position of a GPS receiver
- A method for detecting suspicious activity using network monitors and analyzing network packets
- A specific data encryption method for computer communication
- A method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask
The MPEP explains: “These claims are not directed to an abstract idea because they do not recite an abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea.“
These examples illustrate that claims involving complex technological processes or specific improvements to computer functionality are less likely to be considered abstract ideas.
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The MPEP 2106.05(h) provides several examples of limitations that courts have described as merely indicating a field of use or technological environment. Here are some key examples:
- Limiting drug administration to patients with a specific disorder (Mayo Collaborative Servs. v. Prometheus Labs. Inc.)
- Identifying participants in a hedging process as commodity providers and consumers (Bilski v. Kappos)
- Limiting the use of a mathematical formula to determining the circumference of a wheel (Parker v. Flook)
- Specifying that audit log data relates to transactions executed in a computer environment (FairWarning v. Iatric Sys.)
- Limiting virus screening to a telephone network or the Internet (Intellectual Ventures I v. Symantec Corp.)
- Limiting the collection and analysis of data to the electric power grid (Electric Power Group, LLC v. Alstom S.A.)
- Specifying that a budgeting abstract idea is implemented using a “communication medium” including the Internet and telephone networks (Intellectual Ventures I v. Capital One Bank)
These examples demonstrate that merely limiting an abstract idea or judicial exception to a particular field or technological environment is not sufficient to make a claim patent-eligible.
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When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “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).”
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For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
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No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states:
“Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.”
However, it’s important to note that while public knowledge may not constitute public use under 102(b), it could potentially provide grounds for rejection under other sections of the patent law, such as pre-AIA 35 U.S.C. 102(a).
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An invention is considered “ready for patenting” in the context of public use when it has been reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that are sufficiently specific to enable a person skilled in the art to practice the invention. This concept is crucial in determining whether a public use or sale has occurred before the critical date. According to MPEP 2133.03(c):
“The on-sale bar of 35 U.S.C. 102(b) may apply even though the invention is not ready for use in a commercially marketable form.”
The MPEP further clarifies that an invention can be “ready for patenting” when:
- The invention is reduced to practice; or
- The inventor had prepared drawings or other descriptions of the invention sufficient to enable a person of ordinary skill in the art to practice the invention.
It’s important for inventors to be aware that even if an invention is not fully perfected, it may still be considered “ready for patenting” if it meets these criteria.
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Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
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To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:
- The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
- The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.
As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“
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While joint inventors don’t need to work together physically or simultaneously, there must be some level of collaboration or connection. The MPEP cites the case Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., which states:
“For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.”
This indicates that complete isolation or unawareness of each other’s work is not sufficient for joint inventorship. Some form of collaborative effort or shared knowledge is necessary.
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Pre-AIA 35 U.S.C. 102(g) is a provision in U.S. patent law that was relevant before the America Invents Act (AIA) came into effect. According to MPEP 2138.02:
“Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.”
This section of the law was significant because it:
- Defined what could be considered prior art based on earlier invention
- Was limited to inventions made in the United States
- Was used in determining priority in interference proceedings
The MPEP further clarifies: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.”
It’s important to note that while this section still applies to some older patent applications, its relevance has diminished with the implementation of the AIA, which shifted the U.S. to a first-inventor-to-file system.
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While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p):
- A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as it’s clear that the claim is directed to the product and not the process.
- However, a single claim that claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).
The key is to ensure that the claim is clearly directed to either the product or the process, avoiding ambiguity that could lead to indefiniteness.
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The MPEP highlights a key difference between U.S. patent law and that of other countries regarding inventorship:
“The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries.” MPEP 2109
This means that in the U.S., the actual inventors must be named on the patent application, whereas in some other countries, the applicant (who may be a company or assignee) can be named instead of or in addition to the inventors. This difference can lead to confusion for foreign applicants filing in the U.S.
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While the AIA’s “on sale” provision is largely interpreted similarly to pre-AIA law, there are some key differences. The MPEP highlights two main distinctions:
- Geographic limitations: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.” This contrasts with pre-AIA law, which limited “on sale” activities to those occurring “in this country.”
- Exceptions: “[C]ertain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor) that precede the effective filing date by less than one year.”
These differences can significantly impact how “on sale” activities are evaluated in patent applications under AIA compared to pre-AIA law.
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What constitutes a “composition of matter” in patent law?
A “composition of matter” is one of the four categories of statutory subject matter in patent law. The MPEP 2106.03 defines it as follows:
“A composition of matter is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.“
This definition is derived from the Supreme Court’s interpretation in Diamond v. Chakrabarty, 447 U.S. 303 (1980). Compositions of matter can include chemical compounds, mixtures, or other combinations of materials. This category is particularly relevant in fields such as chemistry, pharmaceuticals, and materials science.
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While both exceptions relate to prior public disclosures by inventors, there are key differences:
- AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
- AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).
The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.
However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).
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The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113:
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
This case established that the focus of examination for product-by-process claims should be on the product itself, not the process of making it. However, if the process imparts distinctive structural characteristics to the final product, those characteristics should be considered in determining patentability.
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The “effectively filed” date is crucial for determining whether a reference qualifies as prior art under 35 U.S.C. 102(a)(2). The MPEP explains:
“Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was ‘effectively filed’ before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim.”
Key points about the “effectively filed” date:
- It’s determined by 35 U.S.C. 102(d) for U.S. patents, U.S. patent application publications, and WIPO published applications
- It can be earlier than the actual filing date of the application
- It allows unpublished patent applications to potentially serve as prior art
- It’s crucial for determining the scope of prior art in the first-inventor-to-file system
Understanding the “effectively filed” date is essential for both patent examiners and applicants in assessing the relevance of potential prior art references.
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Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.“
This means that while reference characters can be used to clarify which elements in the detailed description and drawings correspond to elements mentioned in the claims, they don’t change the meaning or breadth of the claim. They serve as a helpful cross-reference tool but don’t limit or expand the claim’s coverage.
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The MPEP 2141.01(a) outlines two distinct tests for determining whether a reference qualifies as analogous art:
- Same Field of Endeavor Test: This test focuses on whether the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem.
- Reasonably Pertinent Test: This test examines whether the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention.
The MPEP emphasizes: “Note that ‘same field of endeavor’ and ‘reasonably pertinent’ are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.”
It’s important to note that a reference only needs to satisfy one of these tests to be considered analogous art. This allows for a broader consideration of prior art that may be relevant to the claimed invention.
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No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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The improvement analysis in Step 2A Prong Two differs from the analysis in Step 2B in a key aspect: consideration of what is well-understood, routine, and conventional activity.
According to the MPEP:
“Specifically, the ‘improvements’ analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity.”
This means that in Step 2A Prong Two:
- The focus is on whether the claim integrates the judicial exception into a practical application.
- The claim may demonstrate an improvement to existing technology even if it does not improve on well-understood, routine, conventional activity.
In contrast, Step 2B considers whether the additional elements amount to significantly more than the judicial exception, which can include an analysis of what is well-understood, routine, and conventional in the field.
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Can patent drawings be used to determine specific dimensions or proportions?
Generally, patent drawings cannot be relied upon to determine specific dimensions or proportions unless explicitly stated to be to scale. According to MPEP 2125:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
However, there are exceptions:
- If the drawing is expressly labeled as being to scale, measurements can be relied upon.
- The overall proportions and relative sizes of elements may be considered if they would be apparent to a person of ordinary skill in the art.
- Specific features clearly shown in the drawings can be used as prior art, even if dimensions are not given.
It’s important to note that while exact measurements are typically not reliable, the drawings can still be used in combination with the written description to determine what would be reasonably taught to one skilled in the art.
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What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
This principle is crucial in evaluating the obviousness of a claimed invention. According to MPEP 2143.01(V):
“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”
This means that when considering whether to combine or modify prior art references to reject a claim as obvious, the examiner must ensure that the proposed changes do not undermine the fundamental purpose or functionality of the original reference. If the modification would make the prior art inoperable or unsuitable for its primary intended use, then the motivation to combine is likely lacking.
Key points to consider:
- The intended purpose of the prior art must be clearly understood
- The impact of the proposed modification on that purpose must be carefully evaluated
- If the modification renders the prior art unsuitable, it weighs against obviousness
- This principle can be a strong argument against an obviousness rejection
Examiners should provide a detailed explanation of how the proposed modification maintains or enhances the prior art’s functionality. Conversely, applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would render a reference unsatisfactory for its intended purpose.
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For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states:
If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective filing date is the earlier of: (1) the filing date of the earliest application in which the subject matter is described; or (2) the actual filing date of the patent or application under examination.
This means that for foreign priority claims, the USPTO will examine the foreign application to ensure it adequately describes the claimed subject matter. If it does, the foreign filing date becomes the effective filing date for that subject matter.
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The “In re Wertheim” case is significant in patent law, particularly regarding claim amendments and written description requirements. The MPEP 2163.05 cites this case:
“In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of ‘25%- 60%’ and specific examples of ‘36%’ and ‘50%.’ A corresponding new claim limitation to ‘35%-60%’ did not meet the description requirement because the phrase ‘25% to 60%’ relates to a range of specific temperature range of 35°C to 60°C.”
This case established that when amending claims to include new range limitations, the new range must be clearly supported by the original disclosure. It’s not enough for the new range to fall within a broader disclosed range; there must be specific support for the endpoints of the new range.
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Enabling prior art for compounds and compositions must allow one of ordinary skill in the art to make or synthesize the compound. As stated in MPEP 2121.02:
“Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound.”
This means that simply mentioning a compound’s name in a reference is not enough to make it enabling prior art. There must be sufficient information for someone skilled in the field to actually produce the compound.
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Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
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Patent examiners evaluate reasonable expectation of success in obviousness rejections by considering various factors outlined in MPEP 2143.02. The evaluation process involves assessing the prior art, the nature of the problem to be solved, and the knowledge of a person of ordinary skill in the art (POSA).
Key points in the examiner’s evaluation include:
- Prior Art Teachings: Examiners consider the specificity and relevance of prior art teachings to the claimed invention.
- Predictability of the Art: The level of predictability in the relevant field is taken into account.
- Scope of the Claims: The breadth of the claims is considered in relation to the prior art teachings.
- Nature of the Invention: The complexity and technological area of the invention are evaluated.
The MPEP provides guidance on the standard for reasonable expectation of success:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
Examiners must provide a rationale for why a POSA would have had a reasonable expectation of success. This rationale should be based on evidence from the prior art, common knowledge in the field, and logical reasoning. If an applicant provides evidence of unexpected results or teaching away in the prior art, examiners must consider this in their evaluation of reasonable expectation of success.
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How does MPEP 2144.04 address reversal, duplication, or omission of parts in patent applications?
MPEP 2144.04 addresses reversal, duplication, and omission of parts in patent applications through specific subsections:
- Reversal of Parts (VI)(A): “The mere reversal of the working parts of a device involves only routine skill in the art.” – In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)
- Duplication of Parts (VI)(B): “The mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” – In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
- Omission of an Element and Its Function (II)(A): “The omission of an element and its function is obvious if the function of the element is not desired.” – Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)
These legal precedents suggest that reversing, duplicating, or omitting parts in a device or process is generally not considered patentable unless it produces a new and unexpected result or solves a specific problem in a non-obvious way. Patent examiners may use these rationales to reject claims that merely involve such modifications without demonstrating a significant improvement or unexpected outcome.
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For a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2), it must meet specific requirements. According to MPEP 2154.01(a):
“AIA 35 U.S.C. 102(a)(2) sets forth three descriptions of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.”
The requirements for a WIPO published application to be prior art under this section are:
- It must be published under the Patent Cooperation Treaty (PCT)
- It must designate the United States
- It must be published in English
If these conditions are met, the WIPO published application can be used as prior art from its effective filing date, even if that date is before the application’s publication date.
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The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in MPEP 2133.03(e):
“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
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Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature. The Manual of Patent Examining Procedure (MPEP) Section 2106.04(b) states:
“The law of nature and natural phenomenon exceptions reflect the Supreme Court’s view that the basic tools of scientific and technological work are not patentable, because the ‘manifestations of laws of nature’ are ‘part of the storehouse of knowledge,’ ‘free to all men and reserved exclusively to none.’”
This means that fundamental scientific principles and naturally occurring things are not eligible for patent protection.
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The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.
According to the MPEP:
The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.
Source: MPEP 2133.02(a)
The critical date is important because:
- Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
- It sets a time limit for inventors to file their patent applications after public disclosure.
- It helps determine the validity of potential prior art references in rejections.
Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).
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No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
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Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
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The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
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“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
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According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
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The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus.
The MPEP states:
“A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”
This means that:
- If a prior art reference clearly names a species that falls within the claimed genus, the genus claim is anticipated.
- The anticipation stands even if the prior art reference discloses multiple species.
- However, if the prior art only discloses a genus without specifically naming the claimed species, it may not anticipate the species claim.
Patent examiners must carefully evaluate the prior art disclosures to determine whether they explicitly or implicitly teach the claimed species within a genus.
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How does the USPTO determine if a negative limitation has written description support?
The USPTO examines negative limitations for written description support based on the guidance provided in MPEP 2173.05(i). The key factors include:
- Express disclosure in the specification
- Inherent disclosure based on what is described
- Original claims
- Drawings that show the absence of a feature
The MPEP states: “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” This means that the negative limitation must be supported by the original specification, either explicitly or implicitly.
For example, if the specification describes a composition “without additive X,” a claim limitation stating “wherein the composition is free of additive X” would likely have sufficient support. However, introducing a negative limitation that was not contemplated in the original disclosure could be considered new matter and rejected under 35 U.S.C. 112(a).
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How does the Internet affect the determination of printed publications in patent law?
The Internet has significantly impacted the concept of printed publications in patent law. According to MPEP 2152.02(b):
“A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
In the context of the Internet, this means:
- Websites and online documents can qualify as printed publications.
- The date a webpage becomes publicly available can be crucial in determining its status as prior art.
- Archived versions of websites (e.g., through the Wayback Machine) may be used to establish publication dates.
- Social media posts, blog entries, and online articles can potentially serve as printed publications.
However, challenges may arise in proving the exact publication date and content of online materials. Patent examiners and courts may require evidence to verify the public accessibility and content of Internet-based references at a specific point in time.
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MPEP 2103 – Patent Examination Process (1)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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MPEP 2106 – Patent Subject Matter Eligibility (3)
The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:
“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”
This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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Judicial exceptions in patent law are categories of subject matter that the courts have found to be outside the four statutory categories of invention. The MPEP defines judicial exceptions as:
“abstract ideas, laws of nature and natural phenomena (including products of nature).”
These exceptions are not patentable on their own because they are considered the “basic tools of scientific and technological work.” However, applications of these exceptions may be eligible for patent protection if they meet certain criteria, such as integrating the exception into a practical application or including additional elements that amount to significantly more than the exception itself.
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MPEP 2106.03 – Eligibility Step 1: The Four Categories Of Statutory Subject Matter (3)
According to the MPEP, non-limiting examples of claims that are not directed to any of the statutory categories include:
- Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations
- Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave
- Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA)
The MPEP further clarifies: “Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture, and is not composed of matter such that it would qualify as a composition of matter.“
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In patent law, machines and manufactures are two distinct categories of statutory subject matter. The MPEP provides definitions for both:
Machine: “A machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This category ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’“
Manufacture: “A manufacture is ‘a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.’ … manufactures are articles that result from the process of manufacturing, i.e., they were produced ‘from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’“
The key difference is that a machine is typically a device with moving parts or circuitry that performs a function, while a manufacture is a tangible article that has been produced or modified by human intervention. Both categories require physical or tangible form.
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What constitutes a “composition of matter” in patent law?
A “composition of matter” is one of the four categories of statutory subject matter in patent law. The MPEP 2106.03 defines it as follows:
“A composition of matter is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.“
This definition is derived from the Supreme Court’s interpretation in Diamond v. Chakrabarty, 447 U.S. 303 (1980). Compositions of matter can include chemical compounds, mixtures, or other combinations of materials. This category is particularly relevant in fields such as chemistry, pharmaceuticals, and materials science.
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MPEP 2106.04(A) – Abstract Ideas (6)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
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The category of abstract ideas “having no particular concrete or tangible form” is a catch-all category for abstract ideas that don’t fit neatly into the other three categories (mathematical concepts, certain methods of organizing human activity, and mental processes) as described in MPEP 2106.04(a). While the MPEP doesn’t provide an exhaustive list, it does offer some examples:
- An idea ‘of itself’: This includes ideas standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.”
- Certain arrangements of printed matter: For example, a set of dice with printed matter on the faces.
- Data recognition and storage: As exemplified in Content Extraction and Transmission LLC v. Wells Fargo Bank.
The MPEP states: “The courts have declined to define abstract ideas, other than by example, so the above-identified concepts should be understood as examples and not as a definitive or exhaustive listing.“
It’s important to note that this category is flexible and can accommodate new types of abstract ideas as they are identified by the courts. When evaluating a claim for patent eligibility, examiners are instructed to consider whether the claim recites an abstract idea, regardless of whether it fits neatly into one of the enumerated categories.
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The MPEP provides several examples of claims that do not recite abstract ideas:
- A method for calculating an absolute position of a GPS receiver
- A method for detecting suspicious activity using network monitors and analyzing network packets
- A specific data encryption method for computer communication
- A method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask
The MPEP explains: “These claims are not directed to an abstract idea because they do not recite an abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea.“
These examples illustrate that claims involving complex technological processes or specific improvements to computer functionality are less likely to be considered abstract ideas.
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MPEP 2106.04(A)(2) – Abstract Idea Groupings (1)
‘Mental processes’ are concepts that can be performed in the human mind or with the aid of pen and paper. According to MPEP 2106.04(a)(2):
The courts consider a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.
Mental processes include:
- Observations
- Evaluations
- Judgments
- Opinions
Importantly, claims can recite a mental process even if they are performed on a computer. The MPEP states: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”
However, claims that cannot practically be performed in the human mind do not recite a mental process. For example, a claim to detecting suspicious activity by using network monitors and analyzing network packets would not be considered a mental process.
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MPEP 2106.04(B) – Laws Of Nature (2)
The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature. The Manual of Patent Examining Procedure (MPEP) Section 2106.04(b) states:
“The law of nature and natural phenomenon exceptions reflect the Supreme Court’s view that the basic tools of scientific and technological work are not patentable, because the ‘manifestations of laws of nature’ are ‘part of the storehouse of knowledge,’ ‘free to all men and reserved exclusively to none.’”
This means that fundamental scientific principles and naturally occurring things are not eligible for patent protection.
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MPEP 2106.04(D) – Integration Of A Judicial Exception Into A Practical Application (2)
What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
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The improvement analysis in Step 2A Prong Two differs from the analysis in Step 2B in a key aspect: consideration of what is well-understood, routine, and conventional activity.
According to the MPEP:
“Specifically, the ‘improvements’ analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity.”
This means that in Step 2A Prong Two:
- The focus is on whether the claim integrates the judicial exception into a practical application.
- The claim may demonstrate an improvement to existing technology even if it does not improve on well-understood, routine, conventional activity.
In contrast, Step 2B considers whether the additional elements amount to significantly more than the judicial exception, which can include an analysis of what is well-understood, routine, and conventional in the field.
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MPEP 2106.04(D)(2) – Particular Treatment And Prophylaxis In Step 2A Prong Two (1)
The MPEP 2106.04(d)(2) provides examples of claims that do not integrate a judicial exception through treatment. These include:
- Insignificant extra-solution activity: “For example, a claim reciting the step of ‘administering a drug providing 6-thioguanine to a patient’ (without more) is not a meaningful limitation.”
- General treatment: “For example, consider a claim that recites mentally analyzing information to identify if a patient has a genotype associated with poor metabolism of beta blocker medications and then ‘administering a lower than normal dosage of a beta blocker medication to a patient identified as having the poor metabolizer genotype.’”
- Field of use limitations: “For instance, a claim that recites ‘administering a suitable medication to a patient’ is not a meaningful limitation because it does not specify what the medication is or how it is administered.”
These examples illustrate that treatments that are too general, lack specificity, or are merely incidental to the core of the invention may not be sufficient to integrate a judicial exception into a practical application.
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MPEP 2106.05 – Eligibility Step 2B: Whether A Claim Amounts To Significantly More (2)
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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“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
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MPEP 2106.05(B) – Particular Machine (3)
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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Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
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When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “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).”
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MPEP 2106.05(C) – Particular Transformation (1)
According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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MPEP 2106.05(D) – Well – Understood (1)
“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
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MPEP 2106.05(E) – Other Meaningful Limitations (1)
Treatment or prophylaxis limitations are a specific type of meaningful limitation that can render a claim patent-eligible. These limitations are particularly relevant in medical and biotechnology fields.
MPEP 2106.05(e) notes:
“With respect to treatment or prophylaxis limitations, such as the immunization step in Classen, examiners should note that the other meaningful limitations consideration overlaps with the particular treatment or prophylaxis consideration that is evaluated in Step 2A Prong Two (see MPEP § 2106.04(d)(2)).”
This overlap means that treatment or prophylaxis steps can serve as both meaningful limitations and evidence of integration into a practical application. These limitations are often concrete, specific actions that apply the judicial exception in a meaningful way, transforming abstract ideas or natural phenomena into patent-eligible subject matter.
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MPEP 2106.05(F) – Mere Instructions To Apply An Exception (1)
The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
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MPEP 2106.05(H) – Field Of Use And Technological Environment (1)
The MPEP 2106.05(h) provides several examples of limitations that courts have described as merely indicating a field of use or technological environment. Here are some key examples:
- Limiting drug administration to patients with a specific disorder (Mayo Collaborative Servs. v. Prometheus Labs. Inc.)
- Identifying participants in a hedging process as commodity providers and consumers (Bilski v. Kappos)
- Limiting the use of a mathematical formula to determining the circumference of a wheel (Parker v. Flook)
- Specifying that audit log data relates to transactions executed in a computer environment (FairWarning v. Iatric Sys.)
- Limiting virus screening to a telephone network or the Internet (Intellectual Ventures I v. Symantec Corp.)
- Limiting the collection and analysis of data to the electric power grid (Electric Power Group, LLC v. Alstom S.A.)
- Specifying that a budgeting abstract idea is implemented using a “communication medium” including the Internet and telephone networks (Intellectual Ventures I v. Capital One Bank)
These examples demonstrate that merely limiting an abstract idea or judicial exception to a particular field or technological environment is not sufficient to make a claim patent-eligible.
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MPEP 2106.06(B) – Clear Improvement To A Technology Or To Computer Functionality (1)
The concept of “clear improvement” in MPEP § 2106.06(b) relates to the Alice/Mayo test by potentially allowing claims to bypass parts of the test. The MPEP states:
“Although the Federal Circuit held these claims eligible at Step 2A as not being directed to abstract ideas, it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being directed to an abstract idea.“
This means that if a claim shows a clear improvement to technology or computer functionality, it might be found eligible without going through the entire Alice/Mayo test. The claim could be considered eligible at Pathway A (streamlined analysis) or at Step 2A of the Alice/Mayo test, depending on the examiner’s assessment of the improvement.
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MPEP 2107 – Guidelines For Examination Of Applications For Compliance With The Utility Requirement (1)
The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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MPEP 2107.01 – General Principles Governing Utility Rejections (1)
The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01:
“Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.”
The MPEP emphasizes that many research tools, such as gas chromatographs and screening assays, have clear, specific, and unquestionable utility. The key is to distinguish between inventions with specifically identified substantial utility and those whose asserted utility requires further research to identify or confirm.
For intermediate products, the MPEP states that a claim to an intermediate product for use in making a final product that has no specific, substantial, and credible utility would not meet the utility requirement. The focus should be on whether the claimed invention has a real-world use that provides an immediate benefit to the public.
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MPEP 2109 – Inventorship (2)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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The MPEP highlights a key difference between U.S. patent law and that of other countries regarding inventorship:
“The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries.” MPEP 2109
This means that in the U.S., the actual inventors must be named on the patent application, whereas in some other countries, the applicant (who may be a company or assignee) can be named instead of or in addition to the inventors. This difference can lead to confusion for foreign applicants filing in the U.S.
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MPEP 2109.01 – Joint Inventorship (2)
Joint inventorship occurs when an invention is made by two or more persons jointly. According to 35 U.S.C. 116, joint inventors can apply for a patent even if:
- They did not physically work together or at the same time
- Each did not make the same type or amount of contribution
- Each did not contribute to every claim of the patent
The MPEP states: “A person who shares in the conception of a claimed invention is a joint inventor of that invention.”
This means that contributing to the inventive concept is crucial for joint inventorship.
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While joint inventors don’t need to work together physically or simultaneously, there must be some level of collaboration or connection. The MPEP cites the case Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., which states:
“For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.”
This indicates that complete isolation or unawareness of each other’s work is not sufficient for joint inventorship. Some form of collaborative effort or shared knowledge is necessary.
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MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (8)
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.
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:
- For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
- For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)
The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”
The petition must include:
- The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
- A petition fee under 37 CFR 1.17(m)
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional
The Director may require additional information if there’s a question about whether the delay was unintentional.
For more information on 37 CFR 1.78, visit: 37 CFR 1.78.
For more information on petition fee, visit: petition fee.
For more information on unintentional delay, visit: unintentional delay.
Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ¶ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:
“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”
This means that when making a benefit claim, you must explicitly state whether the current application is a:
- Continuation
- Divisional
- Continuation-in-part
of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.
Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.
For more information on divisional, visit: divisional.
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
- For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.
According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.
Important considerations:
- Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
- If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
- Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
- In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.
Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.
For more information on ADS, visit: ADS.
For more information on CPA, visit: CPA.
For more information on prior art, visit: prior art.
If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required.
(MPEP § 211)
However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:
- For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
- For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.
For more information on petition requirements, visit: petition requirements.
If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:
“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”
This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
MPEP 2111.02 – Effect Of Preamble (3)
The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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How does the preamble affect claim interpretation in patent applications?
The preamble can significantly affect claim interpretation in patent applications. According to MPEP 2111.02, the effect of the preamble on claim scope can be summarized as follows:
- If the body of the claim fully and intrinsically sets forth the complete invention, and the preamble merely states the purpose or intended use, the preamble is generally not considered a limitation.
- However, if the preamble is “necessary to give life, meaning, and vitality” to the claim, it must be construed as a limitation.
- The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case.
The MPEP states: “Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” This means that if the preamble introduces essential structure or steps, or if it’s necessary to understand the claim as a whole, it will be considered limiting.
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A preamble is considered limiting when it gives life, meaning, and vitality to the claim or if it recites essential structure or steps. According to MPEP 2111.02:
“If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”
This principle is illustrated in cases like Pitney Bowes, Inc. v. Hewlett-Packard Co. and Jansen v. Rexall Sundown, Inc., where the courts found the preambles to be limiting because they gave essential meaning to the claims.
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MPEP 2111.03 – Transitional Phrases (7)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
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The transitional phrase “comprising” in a patent claim is inclusive and open-ended. According to the MPEP, The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
This means that a claim using “comprising” allows for the inclusion of additional elements or steps beyond those explicitly stated in the claim. For example, a claim for a device “comprising A, B, and C” would cover devices that include A, B, and C, as well as devices that include A, B, C, and additional elements.
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How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
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The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
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Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
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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 2112.01 – Composition (1)
An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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MPEP 2113 – Product – By – Process Claims (4)
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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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113:
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
This case established that the focus of examination for product-by-process claims should be on the product itself, not the process of making it. However, if the process imparts distinctive structural characteristics to the final product, those characteristics should be considered in determining patentability.
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MPEP 2114 – Apparatus And Article Claims — Functional Language (3)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
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MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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MPEP 2115 – Material Or Article Worked Upon By Apparatus (3)
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
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In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.”
The court upheld an obviousness rejection, stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” This case reinforces the principle that the material worked upon (in this case, adhesive tape) does not necessarily impart patentability to an apparatus claim if it doesn’t result in a structural difference.
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In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states:
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
This case reinforces the principle that the inclusion of the material or article worked upon by an apparatus does not automatically confer patentability. Patent examiners and practitioners should focus on the structural elements of the claimed apparatus rather than the output it produces.
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MPEP 2117 – Markush Claims (2)
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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MPEP 2121 – Prior Art; General Level Of Operability Required To Make A Prima Facie Case (1)
The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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MPEP 2121.01 – Use Of Prior Art In Rejections Where Operability Is In Question (1)
An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states:
“A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or the time the invention was made for applications or patents subject to pre-AIA law.”
This means that the prior art must provide enough detail for someone skilled in the field to reproduce the invention without excessive difficulty.
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MPEP 2121.02 – Compounds And Compositions — What Constitutes Enabling Prior Art (1)
Enabling prior art for compounds and compositions must allow one of ordinary skill in the art to make or synthesize the compound. As stated in MPEP 2121.02:
“Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound.”
This means that simply mentioning a compound’s name in a reference is not enough to make it enabling prior art. There must be sufficient information for someone skilled in the field to actually produce the compound.
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MPEP 2121.03 – Plant Genetics — What Constitutes Enabling Prior Art (1)
The In re Elsner case, as discussed in MPEP 2121.03, is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states:
“The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar.”
This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant.
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MPEP 2122 – Discussion Of Utility In The Prior Art (1)
Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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MPEP 2125 – Drawings As Prior Art (2)
Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
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Can patent drawings be used to determine specific dimensions or proportions?
Generally, patent drawings cannot be relied upon to determine specific dimensions or proportions unless explicitly stated to be to scale. According to MPEP 2125:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
However, there are exceptions:
- If the drawing is expressly labeled as being to scale, measurements can be relied upon.
- The overall proportions and relative sizes of elements may be considered if they would be apparent to a person of ordinary skill in the art.
- Specific features clearly shown in the drawings can be used as prior art, even if dimensions are not given.
It’s important to note that while exact measurements are typically not reliable, the drawings can still be used in combination with the written description to determine what would be reasonably taught to one skilled in the art.
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MPEP 2126 – Availability Of A Document As A "Patent" For Purposes Of Rejection Under 35 U.S.C. 102(A) Or Pre – Aia 35 U.S.C. 102(A) (1)
The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
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MPEP 2126.01 – Date Of Availability Of A Patent As A Reference (1)
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
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MPEP 2128.01 – Level Of Public Accessibility Required (1)
Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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MPEP 213-Right of Priority of Foreign Application (6)
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.
The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:
1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.
2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.
3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.
4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.
5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.
As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.
MPEP 2131 – Anticipation — Application Of 35 U.S.C. 102 (1)
When a claim covers multiple structures or compositions, anticipation can occur if any one of those structures or compositions is known in the prior art. The MPEP 2131 cites a Federal Circuit case:
When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.
(Brown v. 3M)
This means that for a claim covering multiple options, finding just one of those options in the prior art can be sufficient for an anticipation rejection.
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MPEP 2131.02 – Genus – Species Situations (1)
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus.
The MPEP states:
“A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”
This means that:
- If a prior art reference clearly names a species that falls within the claimed genus, the genus claim is anticipated.
- The anticipation stands even if the prior art reference discloses multiple species.
- However, if the prior art only discloses a genus without specifically naming the claimed species, it may not anticipate the species claim.
Patent examiners must carefully evaluate the prior art disclosures to determine whether they explicitly or implicitly teach the claimed species within a genus.
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MPEP 2132 – Pre – Aia 35 U.S.C. 102(A) (3)
The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).
The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).
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The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).
The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.
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The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:
“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”
This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.
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MPEP 2133.01 – Rejections Of Continuation – In – Part (Cip) Applications (1)
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
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MPEP 2133.02 – Rejections Based On Publications And Patents (1)
Yes, an inventor’s own work can be used as prior art against their patent application under certain circumstances. According to MPEP 2133.02:
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.”
This means that if an inventor publicly discloses their invention (through a publication, public use, or sale) more than one year before filing a patent application, that disclosure can be used as prior art against their own application. This creates a statutory bar to patentability under pre-AIA 35 U.S.C. 102(b).
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MPEP 2133.02(A) – Overcoming A Pre – Aia 35 U.S.C. 102(B) Rejection Based On A Printed Publication Or Patent (2)
To file a petition to accept an unintentionally delayed benefit claim, you should:
- File the petition under 37 CFR 1.78
- Explain the reasons for the delay and demonstrate that it was unintentional
- Pay the required petition fee
- Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)
As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”
For more detailed information on filing these petitions, refer to MPEP § 211.04.
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The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.
According to the MPEP:
The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.
Source: MPEP 2133.02(a)
The critical date is important because:
- Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
- It sets a time limit for inventors to file their patent applications after public disclosure.
- It helps determine the validity of potential prior art references in rejections.
Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).
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MPEP 2133.03 – Rejections Based On "Public Use" Or "On Sale" (1)
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in MPEP 2133.03(e):
“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
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MPEP 2133.03(A) – "Public Use" (4)
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains:
“[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.”
This means that even if an invention is used secretly, if it’s being commercially exploited, it may still be considered a public use. However, the mere fact that an invention is used internally by the inventor or their company to develop future products that are never sold is not sufficient by itself to create a public use bar.
It’s important to note that “public” is not necessarily synonymous with “non-secret.” The determination of whether a use is public depends on various factors, including the nature of the activity, public access, confidentiality obligations, and commercial exploitation.
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Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter:
“An inventor’s private use of the invention, for his or her own enjoyment is not a public use.”
This principle is illustrated in the case of Moleculon Research Corp. v. CBS, Inc., where the court held that an inventor showing his inventive puzzle to close friends in his dorm room and later discussing it with his company president did not result in a “public use.” The key factor was that the inventor retained control over the invention.
However, it’s important to note that if the private use involves commercial exploitation or if the invention becomes accessible to the public without restrictions, it may still be considered a public use. The determination often depends on the specific circumstances and the level of control the inventor maintains over the invention.
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No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states:
“Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.”
However, it’s important to note that while public knowledge may not constitute public use under 102(b), it could potentially provide grounds for rejection under other sections of the patent law, such as pre-AIA 35 U.S.C. 102(a).
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An invention is considered “ready for patenting” in the context of public use when it has been reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that are sufficiently specific to enable a person skilled in the art to practice the invention. This concept is crucial in determining whether a public use or sale has occurred before the critical date. According to MPEP 2133.03(c):
“The on-sale bar of 35 U.S.C. 102(b) may apply even though the invention is not ready for use in a commercially marketable form.”
The MPEP further clarifies that an invention can be “ready for patenting” when:
- The invention is reduced to practice; or
- The inventor had prepared drawings or other descriptions of the invention sufficient to enable a person of ordinary skill in the art to practice the invention.
It’s important for inventors to be aware that even if an invention is not fully perfected, it may still be considered “ready for patenting” if it meets these criteria.
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MPEP 2133.03(B) – "On Sale" (3)
Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may prevent applicant from obtaining a patent.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
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MPEP 2133.03(C) – The "Invention" (1)
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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MPEP 2133.03(D) – "In This Country" (1)
The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“The language ‘in this country’ in pre-AIA 35 U.S.C. 102(b) does not include other WTO or NAFTA member countries, but includes any State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
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MPEP 2133.03(E) – Permitted Activity; Experimental Use (1)
What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
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MPEP 2133.03(E)(2) – Intent (1)
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
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MPEP 2133.03(E)(4) – Factors Indicative Of An Experimental Purpose (1)
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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MPEP 2133.03(E)(5) – Experimentation And Degree Of Supervision And Control (2)
The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
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According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
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MPEP 2133.03(E)(6) – Permitted Experimental Activity And Testing (1)
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
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MPEP 2135 – Pre – Aia 35 U.S.C. 102(D) (1)
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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MPEP 2136.01 – Status Of Unpublished Or Published As Redacted U.S. Application As A Reference Under Pre – Aia 35 U.S.C. 102(E) (1)
Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.
However, this is subject to specific conditions, such as common assignee, applicant, or inventor.
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MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (3)
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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Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
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MPEP 2136.03 – Critical Reference Date (2)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
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No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
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MPEP 2136.04 – Different Inventive Entity; Meaning Of "By Another" (2)
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04:
“‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same.”
This means that even if an application and a reference have one or more inventors in common, the reference can still be considered “by another” if the inventive entities are not identical.
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MPEP 2136.05 – Overcoming A Rejection Under Pre – Aia 35 U.S.C. 102(E) (1)
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
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MPEP 2137 – Pre – Aia 35 U.S.C. 102(F) (1)
Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements:
- Complete Conception: There must be evidence of complete conception by another person. The MPEP states:
Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
- Communication: The complete conception must be communicated to the alleged deriver. The MPEP clarifies:
Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.
Importantly, the party alleging derivation does not need to prove certain elements. The MPEP notes:
- An actual reduction to practice is not required to show derivation.
- The derivation does not need to be of public knowledge.
- The site of derivation does not need to be in the United States.
When evaluating evidence of derivation, patent examiners and the courts will consider these factors to determine if a rejection under pre-AIA 35 U.S.C. 102(f) is appropriate.
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MPEP 2138.01 – Interference Practice (1)
Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
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MPEP 2138.02 – "The Invention Was Made In This Country" (2)
The phrase “The Invention Was Made in This Country” refers to a specific requirement in pre-AIA (pre-America Invents Act) U.S. patent law. According to MPEP 2138.02, this requirement is related to prior art under pre-AIA 35 U.S.C. 102(g).
The MPEP states: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.” This means that for an invention to be considered prior art under this section, it must have been made within the United States.
It’s important to note that this requirement has limited applicability to applications subject to the first inventor to file (FITF) provisions of the AIA. For current applications, refer to MPEP § 2159 et seq. to determine if this rule applies.
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Pre-AIA 35 U.S.C. 102(g) is a provision in U.S. patent law that was relevant before the America Invents Act (AIA) came into effect. According to MPEP 2138.02:
“Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.”
This section of the law was significant because it:
- Defined what could be considered prior art based on earlier invention
- Was limited to inventions made in the United States
- Was used in determining priority in interference proceedings
The MPEP further clarifies: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.”
It’s important to note that while this section still applies to some older patent applications, its relevance has diminished with the implementation of the AIA, which shifted the U.S. to a first-inventor-to-file system.
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MPEP 2138.04 – "Conception" (3)
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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Can an inventor’s testimony alone prove conception in a patent case?
While an inventor’s testimony is important, it is generally not sufficient on its own to prove conception in a patent case. The MPEP 2138.04 states:
“An inventor’s testimony, standing alone, is insufficient to prove conception, as some form of corroboration is required.”
This requirement for corroboration serves several purposes:
- It helps verify the accuracy of the inventor’s recollection
- It protects against fraudulent claims
- It ensures that the conception date is supported by objective evidence
Corroborating evidence can come in various forms, such as contemporaneous documents, witness testimony, or physical exhibits. The key is that there must be some independent evidence that supports the inventor’s claim of conception beyond their own statement.
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Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
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MPEP 2138.05 – "Reduction To Practice" (1)
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
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MPEP 2139.02 – Determining Whether To Apply Pre – Aia 35 U.S.C. 102(A) (3)
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
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MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
MPEP 2141 – Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103 (3)
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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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP:
- Show that the Office erred in its factual findings
- Provide evidence to demonstrate nonobviousness
- Present arguments pointing out specific distinctions that render the claims patentable
- Submit rebuttal evidence, including evidence of secondary considerations
The MPEP states: “37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action.”
Applicants should provide a reasoned statement explaining why they believe the Office has erred in its factual findings or legal conclusions. Mere statements that the Office has not established a prima facie case of obviousness without substantive arguments are generally not considered adequate to rebut the rejection.
When presenting rebuttal evidence, applicants should explain how the evidence demonstrates nonobviousness, such as unexpected results or long-felt but unsolved needs.
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MPEP 2141.01 – Scope And Content Of The Prior Art (1)
When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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MPEP 2141.01(A) – Analogous And Nonanalogous Art (3)
The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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The MPEP 2141.01(a) outlines two distinct tests for determining whether a reference qualifies as analogous art:
- Same Field of Endeavor Test: This test focuses on whether the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem.
- Reasonably Pertinent Test: This test examines whether the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention.
The MPEP emphasizes: “Note that ‘same field of endeavor’ and ‘reasonably pertinent’ are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.”
It’s important to note that a reference only needs to satisfy one of these tests to be considered analogous art. This allows for a broader consideration of prior art that may be relevant to the claimed invention.
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MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (3)
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
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MPEP 2143.01 – Suggestion Or Motivation To Modify The References (1)
What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
This principle is crucial in evaluating the obviousness of a claimed invention. According to MPEP 2143.01(V):
“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”
This means that when considering whether to combine or modify prior art references to reject a claim as obvious, the examiner must ensure that the proposed changes do not undermine the fundamental purpose or functionality of the original reference. If the modification would make the prior art inoperable or unsuitable for its primary intended use, then the motivation to combine is likely lacking.
Key points to consider:
- The intended purpose of the prior art must be clearly understood
- The impact of the proposed modification on that purpose must be carefully evaluated
- If the modification renders the prior art unsuitable, it weighs against obviousness
- This principle can be a strong argument against an obviousness rejection
Examiners should provide a detailed explanation of how the proposed modification maintains or enhances the prior art’s functionality. Conversely, applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would render a reference unsatisfactory for its intended purpose.
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MPEP 2143.02 – Reasonable Expectation Of Success Is Required (1)
Patent examiners evaluate reasonable expectation of success in obviousness rejections by considering various factors outlined in MPEP 2143.02. The evaluation process involves assessing the prior art, the nature of the problem to be solved, and the knowledge of a person of ordinary skill in the art (POSA).
Key points in the examiner’s evaluation include:
- Prior Art Teachings: Examiners consider the specificity and relevance of prior art teachings to the claimed invention.
- Predictability of the Art: The level of predictability in the relevant field is taken into account.
- Scope of the Claims: The breadth of the claims is considered in relation to the prior art teachings.
- Nature of the Invention: The complexity and technological area of the invention are evaluated.
The MPEP provides guidance on the standard for reasonable expectation of success:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
Examiners must provide a rationale for why a POSA would have had a reasonable expectation of success. This rationale should be based on evidence from the prior art, common knowledge in the field, and logical reasoning. If an applicant provides evidence of unexpected results or teaching away in the prior art, examiners must consider this in their evaluation of reasonable expectation of success.
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MPEP 2144.02 – Reliance On Scientific Theory (1)
The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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MPEP 2144.04 – Legal Precedent As Source Of Supporting Rationale (1)
How does MPEP 2144.04 address reversal, duplication, or omission of parts in patent applications?
MPEP 2144.04 addresses reversal, duplication, and omission of parts in patent applications through specific subsections:
- Reversal of Parts (VI)(A): “The mere reversal of the working parts of a device involves only routine skill in the art.” – In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)
- Duplication of Parts (VI)(B): “The mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” – In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
- Omission of an Element and Its Function (II)(A): “The omission of an element and its function is obvious if the function of the element is not desired.” – Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)
These legal precedents suggest that reversing, duplicating, or omitting parts in a device or process is generally not considered patentable unless it produces a new and unexpected result or solves a specific problem in a non-obvious way. Patent examiners may use these rationales to reject claims that merely involve such modifications without demonstrating a significant improvement or unexpected outcome.
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MPEP 2144.05 – Obviousness Of Similar And Overlapping Ranges (4)
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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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
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MPEP 2144.06 – Art Recognized Equivalence For The Same Purpose (1)
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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MPEP 2144.07 – Art Recognized Suitability For An Intended Purpose (2)
The “Art Recognized Suitability for an Intended Purpose” doctrine is a legal principle in patent law that relates to the obviousness of an invention. It states that selecting a known material or component for its recognized suitability for an intended use can support a prima facie case of obviousness.
As stated in MPEP 2144.07:
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” in the landmark case of Sinclair & Carroll Co. v. Interchemical Corp.
This doctrine suggests that if a person of ordinary skill in the art would recognize a material or component as suitable for a particular purpose, using that material or component for that purpose may be considered obvious and thus potentially unpatentable.
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What is the significance of In re Leshin in MPEP 2144.07?
The case In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) is cited in MPEP 2144.07 as an important precedent. The section states:
“Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, was held to be nonpatentable.”
This case reinforces the principle that selecting a known material based on its suitability for an intended use is generally not patentable. It demonstrates that even when an inventor chooses a specific type of plastic for a container, if that plastic was known and suitable for such use before the invention, the selection alone is not enough to establish patentability. This case helps patent examiners and practitioners understand how to apply the concept of “art recognized suitability” in evaluating the obviousness of material choices in inventions.
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MPEP 2145 – Consideration Of Applicant'S Rebuttal Arguments And Evidence (2)
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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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 (4)
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.
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For more information on priority document exchange, visit: priority document exchange.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior foreign application
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
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Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
MPEP 2152 – Detailed Discussion Of Aia 35 U.S.C. 102(A) And (B) (1)
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
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MPEP 2152.01 – Effective Filing Date Of The Claimed Invention (1)
The AIA provides specific guidance for determining the effective filing date of claimed inventions in reissue applications:
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
This means:
- The effective filing date for a claimed invention in a reissue application is treated as if the claim was part of the original patent being reissued.
- This applies even if the claim is new or modified in the reissue application.
- The purpose is to maintain continuity with the original patent and prevent the introduction of intervening prior art solely due to the reissue process.
It’s important to note that while this provision helps determine the effective filing date, reissue applications must still comply with other statutory requirements, including those related to broadening reissues and the two-year filing deadline for broadening reissues.
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MPEP 2152.02 – Prior Art Under Aia 35 U.S.C. 102(A)(1) (Patented (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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MPEP 2152.02(A) – Patented (1)
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
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MPEP 2152.02(B) – Described In A Printed Publication (2)
How does public accessibility affect the status of a printed publication in patent law?
Public accessibility is a crucial factor in determining whether a document qualifies as a printed publication under patent law. According to MPEP 2152.02(b):
“The public accessibility of the material is the key inquiry in determining whether a reference qualifies as a ‘printed publication’ bar under 35 U.S.C. 102(a)(1).”
This means that:
- The material must be accessible to the public or to persons interested and ordinarily skilled in the subject matter.
- There must be no reasonable expectation of secrecy.
- The date of public accessibility is considered the publication date.
For example, a thesis in a university library or a paper presented at a conference may be considered publicly accessible if it’s available to those interested in the field without restriction.
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How does the Internet affect the determination of printed publications in patent law?
The Internet has significantly impacted the concept of printed publications in patent law. According to MPEP 2152.02(b):
“A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
In the context of the Internet, this means:
- Websites and online documents can qualify as printed publications.
- The date a webpage becomes publicly available can be crucial in determining its status as prior art.
- Archived versions of websites (e.g., through the Wayback Machine) may be used to establish publication dates.
- Social media posts, blog entries, and online articles can potentially serve as printed publications.
However, challenges may arise in proving the exact publication date and content of online materials. Patent examiners and courts may require evidence to verify the public accessibility and content of Internet-based references at a specific point in time.
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MPEP 2152.02(C) – In Public Use (1)
How does the AIA define “public use” for patent purposes?
The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c):
“Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date of the claimed invention.”
The MPEP further clarifies that public use under the AIA is defined as any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public. This definition emphasizes the accessibility of the invention to the public, rather than the inventor’s control over the invention or their intent to keep it secret.
It’s important to note that the AIA’s definition of public use is broader than under pre-AIA law, as it includes uses that may not have been visible or known to the public, as long as the use was not actively kept secret.
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MPEP 2152.02(D) – On Sale (2)
While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections:
- On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.
- Public Use: Involves the invention being used in a way that makes it accessible to the public, even if not commercially.
Key differences include:
- Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
- Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
- Purpose: ‘On sale’ focuses on commercial exploitation, while ‘public use’ is more about the invention being accessible or observable by the public.
Both ‘on sale’ and ‘public use’ can trigger statutory bars to patentability, so inventors should be cautious about any activities that might fall into either category before filing a patent application.
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While the AIA’s “on sale” provision is largely interpreted similarly to pre-AIA law, there are some key differences. The MPEP highlights two main distinctions:
- Geographic limitations: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.” This contrasts with pre-AIA law, which limited “on sale” activities to those occurring “in this country.”
- Exceptions: “[C]ertain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor) that precede the effective filing date by less than one year.”
These differences can significantly impact how “on sale” activities are evaluated in patent applications under AIA compared to pre-AIA law.
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MPEP 2152.04 – The Meaning Of "Disclosure" (1)
AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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MPEP 2152.05 – Determining Whether To Apply 35 U.S.C. 102(A)(1) Or 102(A)(2) (4)
35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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35 U.S.C. 102(a)(2) applies to certain patent documents as prior art. The MPEP states:
“U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention.”
Key points to understand:
- The reference’s effectively filed date must be before the claimed invention’s effective filing date
- The reference can be prior art even if its publication date is after the claimed invention’s effective filing date
- 35 U.S.C. 102(d) determines when subject matter in these documents was “effectively filed”
Exceptions to 102(a)(2) prior art are provided in 35 U.S.C. 102(b)(2), including disclosures of the inventor’s own work and common ownership scenarios.
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The main difference between 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the types of prior art they cover:
- 35 U.S.C. 102(a)(1) covers public disclosures, including patents, printed publications, public use, sales, or other public availability of the claimed invention before the effective filing date.
- 35 U.S.C. 102(a)(2) specifically covers U.S. patents, U.S. patent application publications, and international patent applications published under the Patent Cooperation Treaty, which have an effectively filed date before the effective filing date of the claimed invention.
As stated in the MPEP, “First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.” The same process is then applied for 102(a)(2) and its exceptions under 102(b)(2).
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The “effectively filed” date is crucial for determining whether a reference qualifies as prior art under 35 U.S.C. 102(a)(2). The MPEP explains:
“Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was ‘effectively filed’ before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim.”
Key points about the “effectively filed” date:
- It’s determined by 35 U.S.C. 102(d) for U.S. patents, U.S. patent application publications, and WIPO published applications
- It can be earlier than the actual filing date of the application
- It allows unpublished patent applications to potentially serve as prior art
- It’s crucial for determining the scope of prior art in the first-inventor-to-file system
Understanding the “effectively filed” date is essential for both patent examiners and applicants in assessing the relevance of potential prior art references.
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MPEP 2152.06 – Overcoming A 35 U.S.C. 102(A)(1) Or 102(A)(2) Rejection (1)
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
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MPEP 2154.01(A) – Wipo Published Applications (2)
No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
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For a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2), it must meet specific requirements. According to MPEP 2154.01(a):
“AIA 35 U.S.C. 102(a)(2) sets forth three descriptions of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.”
The requirements for a WIPO published application to be prior art under this section are:
- It must be published under the Patent Cooperation Treaty (PCT)
- It must designate the United States
- It must be published in English
If these conditions are met, the WIPO published application can be used as prior art from its effective filing date, even if that date is before the application’s publication date.
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MPEP 2154.01(B) – Determining When Subject Matter Was Effectively Filed Under Aia 35 U.S.C. 102(D) (3)
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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AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
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For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states:
If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective filing date is the earlier of: (1) the filing date of the earliest application in which the subject matter is described; or (2) the actual filing date of the patent or application under examination.
This means that for foreign priority claims, the USPTO will examine the foreign application to ensure it adequately describes the claimed subject matter. If it does, the foreign filing date becomes the effective filing date for that subject matter.
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MPEP 2154.01(D) – Provisional Rejections Under 35 U.S.C. 102(A)(2); Reference Is A Copending U.S. Patent Application (1)
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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MPEP 2154.02(A) – Prior Art Exception Under Aia 35 U.S.C. 102(B)(2)(A) To Aia 35 U.S.C. 102(A)(2) (Inventor – Originated Disclosure Exception) (1)
The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
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MPEP 2154.02(B) – Prior Art Exception Under Aia 35 U.S.C. 102(B)(2)(B) To Aia 35 U.S.C. 102(A)(2) (Inventor – Originated Prior Public Disclosure Exception) (1)
While both exceptions relate to prior public disclosures by inventors, there are key differences:
- AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
- AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).
The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.
However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).
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MPEP 2156 – Joint Research Agreements (1)
To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:
- The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
- The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.
As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(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 2159 – Applicability Date Provisions And Determining Whether An Application Is Subject To The First Inventor To File Provisions Of The Aia (1)
To determine whether your patent application is subject to AIA (America Invents Act) or pre-AIA laws, you need to consider the effective filing date of your claimed invention. According to MPEP 2159:
“Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”
To determine which laws apply:
- Identify the effective filing date of your claimed invention.
- If the effective filing date is on or after March 16, 2013, your application is subject to AIA laws.
- If the effective filing date is before March 16, 2013, your application is subject to pre-AIA laws.
- For applications with multiple claims, if any claim has an effective filing date on or after March 16, 2013, the entire application is subject to AIA laws.
Consult with a patent attorney or agent for a precise determination, as the effective filing date can be affected by factors such as priority claims, continuation applications, and the specific content of the application.
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MPEP 216 – Entitlement to Priority (3)
The assignment of a priority right can significantly impact patent applications. According to MPEP 216:
‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’
Key points about the assignment of priority rights:
- Priority rights can be transferred separately from the application itself.
- The assignment must be executed before filing the later application claiming priority.
- An assignment of the entire right, title, and interest in an application includes the right of priority.
- Partial assignments of priority rights are possible but must be clearly documented.
Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.
For more information on effective filing date, visit: effective filing date.
The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:
- It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
- The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The prior-filed application must contain the certified copy and be identified as such.
- This provision can simplify the process of perfecting priority claims in related applications.
The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.
MPEP 2161 – Three Separate Requirements For Specification Under 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (1)
The best mode requirement is one of the three requirements for a patent specification under 35 U.S.C. 112(a). It requires that the inventor disclose the best way of carrying out the invention that they know of at the time of filing the patent application.
The MPEP states:
“[The specification] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
It’s important to note that the best mode requirement is separate and distinct from the enablement requirement. As mentioned in the MPEP, citing In re Newton: “Best mode is a separate and distinct requirement from the enablement requirement.”
The purpose of the best mode requirement is to prevent inventors from concealing the best way of practicing their invention while still obtaining patent protection for it. This ensures that the public receives the full benefit of the invention in exchange for the patent grant.
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MPEP 2163 – Guidelines For The Examination Of Patent Applications Under The 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (2)
The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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MPEP 2163.01 – Support For The Claimed Subject Matter In Disclosure (1)
Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter:
“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’”
This means that while inherent properties or characteristics of an invention can contribute to satisfying the written description requirement, they must be necessarily present and recognizable to those skilled in the art based on the original disclosure. Applicants should be cautious about relying solely on inherency and should strive to provide explicit description whenever possible.
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MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (4)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
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Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:
“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
Similarly, for domestic priority under 35 U.S.C. 120:
“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”
In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.
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MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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MPEP 2163.05 – Changes To The Scope Of Claims (1)
The “In re Wertheim” case is significant in patent law, particularly regarding claim amendments and written description requirements. The MPEP 2163.05 cites this case:
“In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of ‘25%- 60%’ and specific examples of ‘36%’ and ‘50%.’ A corresponding new claim limitation to ‘35%-60%’ did not meet the description requirement because the phrase ‘25% to 60%’ relates to a range of specific temperature range of 35°C to 60°C.”
This case established that when amending claims to include new range limitations, the new range must be clearly supported by the original disclosure. It’s not enough for the new range to fall within a broader disclosed range; there must be specific support for the endpoints of the new range.
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MPEP 2163.06 – Relationship Of Written Description Requirement To New Matter (1)
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
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MPEP 2163.07 – Amendments To Application Which Are Supported In The Original Description (1)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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MPEP 2164 – The Enablement Requirement (1)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
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MPEP 2164.02 – Working And Prophetic Examples (2)
While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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When claiming a genus in a patent application, working examples play an important role in demonstrating enablement. The MPEP 2164.02 provides guidance on this issue:
“For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation.”
Key points about working examples and genus claims:
- Representative examples can support enablement for the entire genus
- The examples should be considered along with the level of skill in the art and the specification’s information
- Proof of enablement for other members of the genus may be required if the examiner provides adequate reasons
- The examiner must establish that a person skilled in the art could not use the genus as a whole without undue experimentation
It’s important to note that the number of examples needed depends on the predictability of the art and the breadth of the claims.
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MPEP 2164.03 – Relationship Of Predictability Of The Art And The Enablement Requirement (1)
How does the In re Fisher case relate to the predictability of art and enablement?
The In re Fisher case is significant in understanding the relationship between the predictability of art and enablement. According to MPEP 2164.03:
“In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) states: ‘The scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.’”
This case established that:
- The breadth of claims must be reasonably correlated to the scope of enablement in the specification.
- In unpredictable arts, broad claims may not be enabled by a limited disclosure.
- The more unpredictable the art, the more specific enablement is necessary.
This principle guides patent examiners and applicants in assessing whether a specification provides sufficient enablement, especially in less predictable fields like biotechnology and chemistry.
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MPEP 2164.04 – Burden On The Examiner Under The Enablement Requirement (1)
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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MPEP 2164.05 – Determination Of Enablement Based On Evidence As A Whole (1)
The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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MPEP 2164.06 – Quantity Of Experimentation (1)
Working examples play a significant role in determining enablement for patent applications, although they are not always required. According to MPEP 2164.06:
“The presence of a working example in the specification is not always necessary to satisfy the enablement requirement. However, where a working example is necessary for enablement, the quantity of experimentation required must be determined.”
Key points about working examples:
- They can demonstrate the practicality and operability of the invention
- They provide concrete guidance on how to make and use the invention
- Their necessity depends on the nature of the invention and the state of the art
- In unpredictable arts, working examples may be more critical for enablement
- The absence of working examples may be overcome by other forms of disclosure
Examiners consider working examples as part of the overall assessment of enablement. While helpful, the lack of working examples does not automatically mean the application fails to meet the enablement requirement if other factors support enablement.
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MPEP 2164.07 – Relationship Of Enablement Requirement To Utility Requirement Of 35 U.S.C. 101 (1)
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
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MPEP 2164.08(A) – Single Means Claim (1)
The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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MPEP 2164.08(B) – Inoperative Subject Matter (1)
The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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MPEP 2165.02 – Best Mode Requirement Compared To Enablement Requirement (4)
The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:
“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”
This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
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If a patent application fails to set forth any mode of the invention, it is considered a failure of enablement, not a best mode violation. According to MPEP 2165.02:
“The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement.”
This means that if an application doesn’t describe any way to make and use the invention, it fails the enablement requirement. The best mode requirement only comes into play when at least one mode is disclosed, but not necessarily the best one known to the inventor.
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MPEP 2165.03 – Requirements For Rejection For Lack Of Best Mode (1)
The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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MPEP 2166 – Rejections Under 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (2)
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement.
MPEP 2166 provides a form paragraph for rejecting single means claims:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
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MPEP 2172 – Subject Matter Which The Inventor Or A Joint Inventor Regards As The Invention (1)
What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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MPEP 2173.01 – Interpreting The Claims (1)
The principle of claim differentiation is an important tool in claim interpretation. According to the MPEP:
This principle is based on the assumption that each claim in a patent has a different scope. Therefore:
- If a dependent claim includes a specific limitation, it’s presumed that the independent claim it depends from does not include that limitation.
- This presumption can be used to interpret the broader scope of the independent claim.
However, it’s important to note that this is a rebuttable presumption. The MPEP clarifies:
“This presumption is rebuttable if other evidence in the specification or prosecution history clearly indicates that the claims should be interpreted differently.”
Examiners and courts use this principle as one of several tools to understand the intended scope of patent claims.
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MPEP 2173.02 – Determining Whether Claim Language Is Definite (1)
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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MPEP 2173.03 – Correspondence Between Specification And Claims (3)
Antecedent basis is crucial for maintaining clarity in patent claims. The MPEP 2173.03 emphasizes its importance:
“Claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.”
Antecedent basis serves several important functions:
- Ensures clarity and definiteness of claim terms
- Provides a link between the claims and the specification
- Helps avoid indefiniteness rejections under 35 U.S.C. 112(b)
- Facilitates proper interpretation of claim scope
To maintain proper antecedent basis:
- Introduce elements in the claims with “a” or “an”
- Refer back to previously introduced elements with “the” or “said”
- Ensure that all claim terms have support in the specification
By maintaining proper antecedent basis, you can improve the overall quality and clarity of your patent application.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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Glossaries play a crucial role in ensuring adequate definition of claim terms in patent applications. The MPEP 2173.03 specifically mentions the importance of glossaries:
“Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims.”
Glossaries serve several important functions:
- They provide clear definitions for claim terms
- They help establish antecedent basis in the specification
- They assist examiners and the public in understanding the claimed invention
- They can help prevent rejections based on indefiniteness
By including a glossary in the specification, inventors can proactively define their terms, reducing the likelihood of misinterpretation or disputes over claim scope during examination or potential litigation.
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MPEP 2173.04 – Breadth Is Not Indefiniteness (1)
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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MPEP 2173.05(A) – New Terminology (1)
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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MPEP 2173.05(B) – Relative Terminology (1)
The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states:
“The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).”
However, the acceptability of the term depends on whether it can be interpreted by a person of ordinary skill in the art with reasonable certainty. If the term’s meaning is reasonably ascertainable in the context of the invention, it may be acceptable. Otherwise, it could render the claim indefinite.
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MPEP 2173.05(C) – Numerical Ranges And Amounts Limitations (1)
What are “narrow and broader ranges” in the same claim?
“Narrow and broader ranges” in the same claim refer to situations where a patent claim includes both a specific value or narrow range and a broader range that encompasses the narrow range. The MPEP 2173.05(c) addresses this issue:
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”
For example, a claim might state “a length of 5 to 25 centimeters, preferably 15 to 20 centimeters.” This practice can lead to indefiniteness because:
- It’s unclear which range is actually being claimed
- The word “preferably” doesn’t clearly define the claim scope
- It may create uncertainty about the intended protection
Examiners must carefully evaluate such claims to ensure they meet the definiteness requirement under 35 U.S.C. 112(b).
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MPEP 2173.05(E) – Lack Of Antecedent Basis (3)
“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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Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:
“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:
- If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
- Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
- However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.
For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.
It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.
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MPEP 2173.05(F) – Reference To Limitations In Another Claim (1)
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
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MPEP 2173.05(H) – Alternative Limitations (3)
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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Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:
“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”
However, the MPEP also warns:
“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”
Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.
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The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
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MPEP 2173.05(I) – Negative Limitations (2)
What is the difference between a negative limitation and a disclaimer in patent claims?
While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:
Negative Limitations:
- Are part of the original claim language
- Explicitly state what is not included in the claimed invention
- Must have support in the original disclosure
- Example: “A composition free of copper”
Disclaimers:
- Are typically added after the original filing
- Used to overcome prior art rejections or avoid double patenting
- Can sometimes introduce limitations not originally disclosed
- Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”
The MPEP 2173.05(i) focuses primarily on negative limitations, stating:
“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”
This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.
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How does the USPTO determine if a negative limitation has written description support?
The USPTO examines negative limitations for written description support based on the guidance provided in MPEP 2173.05(i). The key factors include:
- Express disclosure in the specification
- Inherent disclosure based on what is described
- Original claims
- Drawings that show the absence of a feature
The MPEP states: “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” This means that the negative limitation must be supported by the original specification, either explicitly or implicitly.
For example, if the specification describes a composition “without additive X,” a claim limitation stating “wherein the composition is free of additive X” would likely have sufficient support. However, introducing a negative limitation that was not contemplated in the original disclosure could be considered new matter and rejected under 35 U.S.C. 112(a).
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MPEP 2173.05(M) – Prolix (1)
In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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MPEP 2173.05(O) – Double Inclusion (1)
The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:
“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”
This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.
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MPEP 2173.05(P) – Claim Directed To Product – By – Process Or Product And Process (2)
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
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While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p):
- A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as it’s clear that the claim is directed to the product and not the process.
- However, a single claim that claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).
The key is to ensure that the claim is clearly directed to either the product or the process, avoiding ambiguity that could lead to indefiniteness.
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MPEP 2173.05(Q) – "Use" Claims (3)
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 key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
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“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
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MPEP 2173.05(S) – Reference To Figures Or Tables (3)
The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“
The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.
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Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.“
This means that while reference characters can be used to clarify which elements in the detailed description and drawings correspond to elements mentioned in the claims, they don’t change the meaning or breadth of the claim. They serve as a helpful cross-reference tool but don’t limit or expand the claim’s coverage.
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MPEP 2173.05(T) – Chemical Formula (1)
Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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MPEP 2173.05(U) – Trademarks Or Trade Names In A Claim (3)
Yes, there are exceptions to the rule against using trademarks or trade names as claim limitations. The MPEP 2173.05(u) states:
“Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982) states that a trademark or trade name is permissible in a claim to identify the source of goods.“
This exception allows for the use of trademarks or trade names in claims under specific circumstances:
- When used to identify the source of goods, rather than the goods themselves.
- If the trademark or trade name is used in conjunction with the trademark’s generic terminology.
- When the use does not affect the clarity or definiteness of the claim.
However, it’s important to note that even when identifying the source, care should be taken to ensure the claim remains clear and definite.
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While using trademarks or trade names in patent claims can be problematic, they can be used more freely in the patent specification. Here are guidelines for proper use:
- Use the trademark or trade name in conjunction with the generic terminology.
- Indicate that the term is a trademark, e.g., by using the ™ or ® symbol.
- Clarify the source of the trademark or trade name.
- Provide a clear description of the product or material associated with the trademark.
The MPEP 608.01(v) provides guidance on the use of trademarks in patent applications:
“If the product to which the trademark refers is set forth in such language that its identity is clear, the identification is sufficient. Where the product is set forth in the specification in language which is not clear, the examiner should require the applicant to use language which is clear.“
By following these guidelines, you can use trademarks or trade names in the specification while maintaining clarity and avoiding potential indefiniteness issues.
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Using a trademark as a generic term in a patent claim can have significant negative consequences:
- It may render the claim indefinite under 35 U.S.C. 112(b).
- It constitutes improper use of the trademark.
- It can potentially lead to the loss of trademark rights.
The MPEP 2173.05(u) states:
“In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”
This guidance emphasizes the importance of avoiding the use of trademarks as generic terms in patent claims to maintain both claim clarity and trademark protection.
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MPEP 2173.05(V) – Mere Function Of Machine (1)
The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
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MPEP 2174 – Relationship Between The Requirements Of 35 U.S.C. 112(A) And (B) Or Pre – Aia 35 U.S.C. 112 (1)
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112 (2)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112(B) Or Pre – Aia 35 U.S.C. 112 (3)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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MPEP 2181 – Identifying And Interpreting A 35 U.S.C. 112(F) Or Pre – Aia 35 U.S.C. 112 (2)
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
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For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
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MPEP 2182 – Search And Identification Of The Prior Art (1)
According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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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 2184 – Determining Whether An Applicant Has Met The Burden Of Proving Nonequivalence After A Prima Facie Case Is Made (1)
The interpretation of “equivalents” in means-plus-function claims can vary depending on how the element is described in the supporting specification. According to MPEP 2184:
“Generally, an ‘equivalent’ is interpreted as embracing more than the specific elements described in the specification for performing the specified function, but less than any element that performs the function specified in the claim.”
The scope of equivalents can range from broad to narrow:
- If the disclosure is broad, it may encompass any structure, material, or act that performs the claimed function.
- If the specification describes the invention only in the context of a specific structure, material, or act, the scope of equivalents may be constricted to virtually only the disclosed embodiments.
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MPEP 2186 – Relationship To The Doctrine Of Equivalents (2)
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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35 U.S.C. 112(f) (formerly 35 U.S.C. 112, sixth paragraph) has a specific relationship to the doctrine of equivalents. MPEP 2186 explains:
“35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permit means- (or step-) plus-function limitations in claims to combinations, ‘with the proviso that application of the broad literal language of such claims must be limited to only those means that are ‘equivalent’ to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.’”
In essence, 35 U.S.C. 112(f) applies the doctrine of equivalents in a restrictive manner to means-plus-function claim limitations, limiting their scope to equivalents of the structures disclosed in the specification.
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MPEP 2187 – Form Paragraphs For Use Relating To 35 U.S.C. 112(F) Or Pre – Aia 35 U.S.C. 112 (1)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
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MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (15)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
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The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
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Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
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The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
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A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
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A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
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The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways:
- “No cause” extensions for up to two months are not available.
- All requests must be filed on or before the day on which action by the patent owner is due.
- All requests must include a showing of sufficient cause and be for a reasonable time.
- The mere filing of a request does not automatically effect an extension.
- First requests are generally granted for one month if sufficient cause is shown.
- Second or subsequent requests are only granted in extraordinary situations.
The MPEP states: “The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT).“
This difference is due to third-party requested reexaminations being considered “inter partes proceedings” under the Patent Law Treaty, while patent owner requested and Director ordered reexaminations are not.
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The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent:
- Multiple ex parte reexamination proceedings are generally merged into a single proceeding.
- If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations.
- The USPTO may suspend one proceeding in favor of another to promote efficiency.
The MPEP states: “If multiple ex parte reexamination proceedings are pending concurrently on a patent, the proceedings will generally be merged. If a reissue application is pending concurrently with a reexamination proceeding, the USPTO will usually merge the two proceedings.”
This approach ensures a coordinated examination and helps prevent conflicting outcomes.
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The MPEP 2210 provides guidance on how a third party can anonymously request ex parte reexamination:
“If a third party requester desires anonymity, the request for ex parte reexamination can be filed by an attorney or agent representing the third party requester. The attorney or agent should not be the attorney or agent of record in the patent file.”
The MPEP further clarifies:
- The request must be signed by the attorney or agent
- The attorney or agent may not use the “certificate of service” portion of the reexamination request
- Any correspondence address provided should be that of the attorney or agent
This approach allows the third party to maintain anonymity while still initiating the reexamination process.
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MPEP 2206 – Submission And Handling Of Prior Art Or Section 301 Written Statements (1)
Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
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MPEP 2210 – Request For Ex Parte Reexamination Under 35 U.S.C. 302 (2)
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
To learn more:
The MPEP 2210 provides guidance on how a third party can anonymously request ex parte reexamination:
“If a third party requester desires anonymity, the request for ex parte reexamination can be filed by an attorney or agent representing the third party requester. The attorney or agent should not be the attorney or agent of record in the patent file.”
The MPEP further clarifies:
- The request must be signed by the attorney or agent
- The attorney or agent may not use the “certificate of service” portion of the reexamination request
- Any correspondence address provided should be that of the attorney or agent
This approach allows the third party to maintain anonymity while still initiating the reexamination process.
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MPEP 2216 – Substantial New Question Of Patentability (1)
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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MPEP 2224 – Correspondence (1)
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
To learn more:
MPEP 2242 – Criteria For Deciding Request Filed Under 35 U.S.C. 302 (1)
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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MPEP 2246 – Decision Ordering Reexamination Under 35 U.S.C. 304 (1)
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
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MPEP 2248 – Petition From Denial Of Request Filed Under 35 U.S.C. 302 (1)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
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MPEP 2250 – Amendment By Patent Owner (1)
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
MPEP 2254 – Conduct Of Ex Parte Reexamination Proceedings (1)
The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent:
- Multiple ex parte reexamination proceedings are generally merged into a single proceeding.
- If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations.
- The USPTO may suspend one proceeding in favor of another to promote efficiency.
The MPEP states: “If multiple ex parte reexamination proceedings are pending concurrently on a patent, the proceedings will generally be merged. If a reissue application is pending concurrently with a reexamination proceeding, the USPTO will usually merge the two proceedings.”
This approach ensures a coordinated examination and helps prevent conflicting outcomes.
To learn more:
MPEP 2258 – Scope Of Ex Parte Reexamination (1)
How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
To learn more:
MPEP 2265 – Extension Of Time (1)
The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways:
- “No cause” extensions for up to two months are not available.
- All requests must be filed on or before the day on which action by the patent owner is due.
- All requests must include a showing of sufficient cause and be for a reasonable time.
- The mere filing of a request does not automatically effect an extension.
- First requests are generally granted for one month if sufficient cause is shown.
- Second or subsequent requests are only granted in extraordinary situations.
The MPEP states: “The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT).“
This difference is due to third-party requested reexaminations being considered “inter partes proceedings” under the Patent Law Treaty, while patent owner requested and Director ordered reexaminations are not.
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MPEP 2274 – Appeal Brief (1)
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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MPEP 2281 – Interviews In Ex Parte Reexamination Proceedings (1)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
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MPEP 2293 – Intervening Rights (1)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
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MPEP 2300 – Interference And Derivation Proceedings (10)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
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After a final decision in an interference proceeding, the claims are handled as follows:
- Claims that were not involved in the interference remain pending in the application.
- Claims that were involved in the interference are disposed of according to the judgment.
- Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.
As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”
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According to MPEP 2304.01(d), finally refused or canceled claims are generally excluded from an interference proceeding. The MPEP states:
“Claims which have been finally refused or canceled are generally excluded from the interference.”
This treatment of finally refused or canceled claims serves several purposes:
- It streamlines the interference process by focusing on active, potentially patentable claims.
- It prevents the reintroduction of claims that have already been determined to be unpatentable.
- It helps maintain the efficiency and clarity of the interference proceeding.
However, it’s important to note that the word “generally” in the MPEP indicates that there might be rare exceptions to this rule, which would be determined by the administrative patent judge (APJ) based on the specific circumstances of the case.
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Yes, there are limitations on the types of files an opposing party can access in a contested case. According to MPEP 2307.02, access is ordinarily limited to specific categories of records:
- The application file for an involved patent
- An involved application
- An application for which a party has been accorded benefit under subpart E of 37 CFR 41
The MPEP explicitly states: “Access and copies will ordinarily only be authorized for the following records: (1) The application file for an involved patent; (2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part.”
It’s important to note that this access is distinct from public access and is specifically granted for the purposes of the contested case. Access to other types of records may be more restricted and would likely require additional justification or special authorization from the Board.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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How does access to files under 37 CFR 41.109 differ from public access under 37 CFR 1.11 and 1.14?
Access to files under 37 CFR 41.109 is distinct from public access under 37 CFR 1.11 and 1.14. The key differences are:
- 37 CFR 41.109 specifically applies to opposing parties in contested cases.
- It allows access to involved patents, applications, and accorded benefit applications.
- This access is independent of public availability under 37 CFR 1.11 and 1.14.
As stated in MPEP 2307.02: “The availability of a file to an opposing party under 37 CFR 41.109 has no bearing on whether a file is otherwise available under 37 CFR 1.11 or 1.14.” This means that even if a file is not publicly available, it may still be accessible to an opposing party in a contested case under 37 CFR 41.109.
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According to MPEP 2308.01, there are multiple types of judgments in an interference that can lead to the final disposal of claims. The section states: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This means that the following types of judgments can result in final disposal:
- Priority judgments: Determining which party was the first to invent
- Patentability judgments: Deciding if the claim meets the requirements for patentability
- Other adverse judgments: Any other judgment that goes against the claim in question
Each of these judgments, when rendered against a claim, results in the final disposal of that claim, preventing further prosecution in its current form.
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According to MPEP 2307.02, any request for access to or copies of Office records directly related to a contested case must adhere to the following requirements:
- The request must be filed with the Board.
- It must precisely identify the records being requested.
- For copies, the appropriate fee set under 37 CFR 1.19(b) must be included.
As stated in the MPEP: “Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.”
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“Patentably indistinct claims” in the context of interfering applications refer to claims from different applications that are substantially similar or overlapping in scope. According to MPEP 2304.01(d):
“Interfering claims of applications with either the same assignee or the same inventive entity are ‘patentably indistinct claims’ within the meaning of 37 CFR 1.78(f).”
These claims are typically subject to consolidation or restriction requirements to streamline the examination process and address potential interferences efficiently.
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MPEP 2304 – Suggesting An Interference (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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MPEP 2304.01(D) – Sorting Claims (2)
According to MPEP 2304.01(d), finally refused or canceled claims are generally excluded from an interference proceeding. The MPEP states:
“Claims which have been finally refused or canceled are generally excluded from the interference.”
This treatment of finally refused or canceled claims serves several purposes:
- It streamlines the interference process by focusing on active, potentially patentable claims.
- It prevents the reintroduction of claims that have already been determined to be unpatentable.
- It helps maintain the efficiency and clarity of the interference proceeding.
However, it’s important to note that the word “generally” in the MPEP indicates that there might be rare exceptions to this rule, which would be determined by the administrative patent judge (APJ) based on the specific circumstances of the case.
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“Patentably indistinct claims” in the context of interfering applications refer to claims from different applications that are substantially similar or overlapping in scope. According to MPEP 2304.01(d):
“Interfering claims of applications with either the same assignee or the same inventive entity are ‘patentably indistinct claims’ within the meaning of 37 CFR 1.78(f).”
These claims are typically subject to consolidation or restriction requirements to streamline the examination process and address potential interferences efficiently.
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MPEP 2308.01 – Final Disposal Of Claims (2)
After a final decision in an interference proceeding, the claims are handled as follows:
- Claims that were not involved in the interference remain pending in the application.
- Claims that were involved in the interference are disposed of according to the judgment.
- Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.
As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”
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According to MPEP 2308.01, there are multiple types of judgments in an interference that can lead to the final disposal of claims. The section states: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This means that the following types of judgments can result in final disposal:
- Priority judgments: Determining which party was the first to invent
- Patentability judgments: Deciding if the claim meets the requirements for patentability
- Other adverse judgments: Any other judgment that goes against the claim in question
Each of these judgments, when rendered against a claim, results in the final disposal of that claim, preventing further prosecution in its current form.
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MPEP 2313 – Action Once A Derivation Proceeding Is Instituted (1)
No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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MPEP 2400 – Biotechnology (20)
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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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 Listing” is a separate part of a patent application that contains disclosures of nucleotide and/or amino acid sequences, along with associated information, using a standardized format and symbols. According to MPEP 2421.01, it is required for applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a).
The MPEP states: 37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823.
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Under the new Sequence Rules, patent applicants must submit sequence listings in a specific format. MPEP 2412.01 states that “an applicant is required to submit sequence data… in eXtensible Markup Language (XML) format.”
This XML file must conform to the requirements specified in 37 CFR 1.831 – 1.834, which in turn reference particular paragraphs of WIPO Standard ST.26. The use of XML format ensures standardization and machine-readability of sequence data across different patent offices worldwide.
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For patent applications filed on or after January 1, 2022, the USPTO has specific procedures for handling defective sequence listings. According to MPEP 2422.07:
“Applications filed on or after January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be accepted and the defective sequence listing will be treated in accordance with 37 CFR 1.52(e)(8).”
This means:
- The application will be accepted for filing.
- The applicant will be notified of the defective sequence listing.
- The applicant will be given a period of time to correct the defective sequence listing.
- If the defect is not corrected within the specified time, the application may be held abandoned.
It’s important to note that this procedure differs from that for applications filed before January 1, 2022, which were subject to different rules regarding sequence listing defects.
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If a sequence listing XML file is not submitted within the time period set in the notice, the application may be held abandoned. According to MPEP 2414:
“If applicant fails to timely provide the required sequence listing XML file, the application will be held abandoned.”
It’s crucial for applicants to respond promptly to any notices regarding sequence listing requirements to avoid potential abandonment of their application.
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When submitting a “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), applicants are required to pay a late furnishing fee. According to MPEP 2414.05:
“In response to such a requirement, the late furnishing fee set forth in § 1.445(a)(5) is also required.”
This fee is in addition to the submission of the “Sequence Listing XML” and a statement that the information does not go beyond the original disclosure. The specific amount of the fee can be found in 37 CFR 1.445(a)(5) and is subject to change, so applicants should consult the current fee schedule on the USPTO website.
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According to the MPEP, amino acid sequences must be set forth separately under certain conditions. Specifically:
“When the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).”
This means that if the amino acid sequence derived from the coding regions meets the minimum length requirements specified in 37 CFR 1.821(a), it must be presented as a separate sequence in the patent application, in addition to being depicted below the corresponding codons.
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If a patent application is in condition for allowance except for a required deposit, the USPTO may notify the applicant and set a three-month period for making the deposit. As stated in MPEP 2411.03:
“[T]he Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment.”
This period is not extendable under 37 CFR 1.136. Failure to make the deposit within this timeframe may result in abandonment of the application.
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According to MPEP 2412.05(a), intentionally skipped sequences must be included in the “Sequence Listing XML” and represented as follows:
- Use the element SequenceData and its attribute sequenceIDNumber, providing the sequence identifier of the skipped sequence as the value.
- Include the elements INSDSeq_length, INSDSeq_moltype, and INSDSeq_division, but with no value provided.
- Do not include the element INSDSeq_feature-table.
- Use the element INSDSeq_sequence with the string “000” as the value.
The MPEP states: “Where no sequence is present for a sequence identifier, i.e. an intentionally skipped sequence, ‘000’ must be used in place of a sequence.” This ensures that the total number of sequences in the listing matches the total number of sequence identifiers, maintaining consistency and completeness in the documentation.
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The element in a Sequence Listing XML serves a specific purpose in identifying the type of molecule being described. Here’s how it functions:
- It specifies whether the sequence is DNA, RNA, or protein.
- This information is crucial for proper interpretation of the sequence data.
- It helps in determining the appropriate analysis methods and tools to be used.
The MPEP 2413.01 mentions the as one of the elements within the container. By clearly indicating the molecule type, this element ensures that patent examiners and other readers can correctly understand and evaluate the sequence information provided in the application.
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The element in a Sequence Listing XML is used to describe features of the sequence. Here’s how it’s structured and used:
- It contains one or more elements.
- Each element describes a specific feature of the sequence.
- Features can include biological significance, such as coding regions or mutation sites.
The MPEP 2413.01 states: “The contains one or more elements.” This table allows applicants to provide detailed information about specific regions or characteristics of the sequence, which is crucial for understanding its biological function and patentability.
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The element in a Sequence Listing XML contains crucial information about the actual sequence. Here’s what it includes:
- The raw sequence data itself.
- It represents the order of nucleotides (for DNA/RNA) or amino acids (for proteins).
- The sequence is presented without spaces or numbers.
According to MPEP 2413.01, “The contains the raw sequence data.” This element is essential as it provides the core information about the biological sequence being disclosed in the patent application.
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The element in a Sequence Listing XML serves a specific purpose:
- It is used to provide additional sequence identifiers for a given sequence.
- This element can contain one or more sub-elements.
- Each sub-element represents an alternative identifier for the sequence.
According to MPEP 2413.01, “The contains one or more elements identifying alternative sequences.” This allows for flexibility in referencing sequences using different identification systems or nomenclatures.
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Yes, there are additional fees for submitting large Sequence Listing files to the USPTO. The fee structure is as follows:
- Sequence Listing ASCII plain text files of 300 MB or more are subject to a fee under 37 CFR 1.21(o).
- The fee is divided into two tiers:
- Tier 1: File sizes 300 MB to 800 MB
- Tier 2: File sizes greater than 800 MB
- The fee is due upon the first submission of a Sequence Listing that meets the size criteria.
- If a larger file is submitted later, the difference in fees must be paid.
The MPEP states: Any “Sequence Listing” ASCII plain text file of 300 MB or more is subject to a fee under 37 CFR 1.21(o) to manage handling of the oversized submission (37 CFR 1.52(f)(3)). Pricing for this fee is divided into two tiers with Tier 1 for file sizes 300 MB to 800 MB and Tier 2 for file sizes greater than 800 MB.
It’s important to note that these fees are designed to encourage applicants to include only essential sequence data in their Sequence Listings, thereby reducing strain on USPTO resources.
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What are the requirements for INSDSeq_length in a Sequence Listing XML?
According to MPEP 2413, the INSDSeq_length element in a Sequence Listing XML has specific requirements:
- It must be a positive integer
- It represents the number of residues in the sequence
- For nucleotide sequences, it includes both nucleotides and nucleotide analogs
- For amino acid sequences, it includes amino acids, modified amino acids, and unknown amino acids
MPEP 2413 states: “The length of the sequence must be indicated by a positive integer expressing the number of residues.”
This element is crucial for accurately representing the size of each sequence in the Sequence Listing XML file.
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Yes, applicants need to specify the term of deposit even if it’s made under the Budapest Treaty. The MPEP clearly states:
Unless applicant indicates that the deposit has been made under the Budapest Treaty, applicant must indicate the term for which the deposit has been made.
This means that if the deposit is not explicitly stated to be under the Budapest Treaty, the applicant must provide information about the term of deposit. Even for Budapest Treaty deposits, it’s advisable to clearly state the term to avoid any potential issues or misunderstandings during the examination process.
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When submitting a “Sequence Listing XML” on read-only optical discs, proper labeling and packaging are crucial. According to MPEP 2413.03, follow these guidelines:
- Marking: All read-only optical discs, fees, and accompanying papers should be marked “Mail Stop SEQUENCE.”
- Hand delivery: For hand delivery to the Customer Service Window, place the disc in a protective mailer labeled with at least the application number (if available).
- Labeling requirements: Adhere to the labeling requirements of 37 CFR 1.52(e) and 1.834(b)(2).
- Packaging: Use staples and clips carefully to attach the mailer to the submitted papers without contacting or compressing the media.
- Multiple discs: If a compressed XML file doesn’t fit on a single disc, it may be split into multiple parts, labeled in compliance with § 1.52(e)(5)(vi).
The MPEP also states: “In no situations should additional or complimentary electronic copies be delivered to examiners or other Office personnel.”
By following these guidelines, you ensure proper handling and processing of your “Sequence Listing XML” submission.
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Non-compliance with Sequence Listing requirements can have significant consequences for patent applications. According to MPEP 2427, consequences may include:
- Delayed examination of the application
- Issuance of a notice of non-compliant amendment
- Requirement to submit a compliant Sequence Listing and associated documentation
- Potential loss of filing date if the non-compliance is not corrected in a timely manner
The USPTO uses various form paragraphs (e.g., ¶ 24.01 – ¶ 24.17) to notify applicants of specific deficiencies and required responses. For example, form paragraph ¶ 24.02 states: “This application fails to comply with the requirements of 37 CFR 1.821 – 1.825 because it does not contain a ‘Sequence Listing’ as a separate part of the disclosure or a CRF of the ‘Sequence Listing’.”
Applicants must address these issues promptly to avoid potential delays or other negative impacts on their patent applications.
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MPEP 2408 – Term Of Deposit (1)
Yes, applicants need to specify the term of deposit even if it’s made under the Budapest Treaty. The MPEP clearly states:
Unless applicant indicates that the deposit has been made under the Budapest Treaty, applicant must indicate the term for which the deposit has been made.
This means that if the deposit is not explicitly stated to be under the Budapest Treaty, the applicant must provide information about the term of deposit. Even for Budapest Treaty deposits, it’s advisable to clearly state the term to avoid any potential issues or misunderstandings during the examination process.
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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 2411.03 – Application In Condition For Allowance Except For Deposit (1)
If a patent application is in condition for allowance except for a required deposit, the USPTO may notify the applicant and set a three-month period for making the deposit. As stated in MPEP 2411.03:
“[T]he Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment.”
This period is not extendable under 37 CFR 1.136. Failure to make the deposit within this timeframe may result in abandonment of the application.
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MPEP 2412.01 – Overview Of The Sequence Rules (1)
Under the new Sequence Rules, patent applicants must submit sequence listings in a specific format. MPEP 2412.01 states that “an applicant is required to submit sequence data… in eXtensible Markup Language (XML) format.”
This XML file must conform to the requirements specified in 37 CFR 1.831 – 1.834, which in turn reference particular paragraphs of WIPO Standard ST.26. The use of XML format ensures standardization and machine-readability of sequence data across different patent offices worldwide.
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MPEP 2412.05(A) – Use Of Sequentially Numbered Sequence Identifiers In The "Sequence Listing Xml" (1)
According to MPEP 2412.05(a), intentionally skipped sequences must be included in the “Sequence Listing XML” and represented as follows:
- Use the element SequenceData and its attribute sequenceIDNumber, providing the sequence identifier of the skipped sequence as the value.
- Include the elements INSDSeq_length, INSDSeq_moltype, and INSDSeq_division, but with no value provided.
- Do not include the element INSDSeq_feature-table.
- Use the element INSDSeq_sequence with the string “000” as the value.
The MPEP states: “Where no sequence is present for a sequence identifier, i.e. an intentionally skipped sequence, ‘000’ must be used in place of a sequence.” This ensures that the total number of sequences in the listing matches the total number of sequence identifiers, maintaining consistency and completeness in the documentation.
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MPEP 2413 – Content Of "Sequence Listing Xml" And Form And Format Of The "Sequence Listing Xml" File (1)
What are the requirements for INSDSeq_length in a Sequence Listing XML?
According to MPEP 2413, the INSDSeq_length element in a Sequence Listing XML has specific requirements:
- It must be a positive integer
- It represents the number of residues in the sequence
- For nucleotide sequences, it includes both nucleotides and nucleotide analogs
- For amino acid sequences, it includes amino acids, modified amino acids, and unknown amino acids
MPEP 2413 states: “The length of the sequence must be indicated by a positive integer expressing the number of residues.”
This element is crucial for accurately representing the size of each sequence in the Sequence Listing XML file.
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MPEP 2413.01 – Parts Of The "Sequence Listing Xml" (4)
The element in a Sequence Listing XML serves a specific purpose in identifying the type of molecule being described. Here’s how it functions:
- It specifies whether the sequence is DNA, RNA, or protein.
- This information is crucial for proper interpretation of the sequence data.
- It helps in determining the appropriate analysis methods and tools to be used.
The MPEP 2413.01 mentions the as one of the elements within the container. By clearly indicating the molecule type, this element ensures that patent examiners and other readers can correctly understand and evaluate the sequence information provided in the application.
To learn more:
The element in a Sequence Listing XML is used to describe features of the sequence. Here’s how it’s structured and used:
- It contains one or more elements.
- Each element describes a specific feature of the sequence.
- Features can include biological significance, such as coding regions or mutation sites.
The MPEP 2413.01 states: “The contains one or more elements.” This table allows applicants to provide detailed information about specific regions or characteristics of the sequence, which is crucial for understanding its biological function and patentability.
To learn more:
The element in a Sequence Listing XML contains crucial information about the actual sequence. Here’s what it includes:
- The raw sequence data itself.
- It represents the order of nucleotides (for DNA/RNA) or amino acids (for proteins).
- The sequence is presented without spaces or numbers.
According to MPEP 2413.01, “The contains the raw sequence data.” This element is essential as it provides the core information about the biological sequence being disclosed in the patent application.
To learn more:
The element in a Sequence Listing XML serves a specific purpose:
- It is used to provide additional sequence identifiers for a given sequence.
- This element can contain one or more sub-elements.
- Each sub-element represents an alternative identifier for the sequence.
According to MPEP 2413.01, “The contains one or more elements identifying alternative sequences.” This allows for flexibility in referencing sequences using different identification systems or nomenclatures.
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MPEP 2413.03 – How To Submit The "Sequence Listing Xml" (1)
When submitting a “Sequence Listing XML” on read-only optical discs, proper labeling and packaging are crucial. According to MPEP 2413.03, follow these guidelines:
- Marking: All read-only optical discs, fees, and accompanying papers should be marked “Mail Stop SEQUENCE.”
- Hand delivery: For hand delivery to the Customer Service Window, place the disc in a protective mailer labeled with at least the application number (if available).
- Labeling requirements: Adhere to the labeling requirements of 37 CFR 1.52(e) and 1.834(b)(2).
- Packaging: Use staples and clips carefully to attach the mailer to the submitted papers without contacting or compressing the media.
- Multiple discs: If a compressed XML file doesn’t fit on a single disc, it may be split into multiple parts, labeled in compliance with § 1.52(e)(5)(vi).
The MPEP also states: “In no situations should additional or complimentary electronic copies be delivered to examiners or other Office personnel.”
By following these guidelines, you ensure proper handling and processing of your “Sequence Listing XML” submission.
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MPEP 2414 – Notification Of A Failure To Comply With Sequence Listing Requirements And Amendments Relating To "Sequence Listing Xml" Files Under 37 Cfr 1.835 (1)
If a sequence listing XML file is not submitted within the time period set in the notice, the application may be held abandoned. According to MPEP 2414:
“If applicant fails to timely provide the required sequence listing XML file, the application will be held abandoned.”
It’s crucial for applicants to respond promptly to any notices regarding sequence listing requirements to avoid potential abandonment of their application.
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MPEP 2421.01 – Definition Of "Sequence Listing" And Computer Readable Form (Crf) (1)
A “Sequence Listing” is a separate part of a patent application that contains disclosures of nucleotide and/or amino acid sequences, along with associated information, using a standardized format and symbols. According to MPEP 2421.01, it is required for applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a).
The MPEP states: 37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823.
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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 2422.03 – Sequence Listing Submission (1)
Yes, there are additional fees for submitting large Sequence Listing files to the USPTO. The fee structure is as follows:
- Sequence Listing ASCII plain text files of 300 MB or more are subject to a fee under 37 CFR 1.21(o).
- The fee is divided into two tiers:
- Tier 1: File sizes 300 MB to 800 MB
- Tier 2: File sizes greater than 800 MB
- The fee is due upon the first submission of a Sequence Listing that meets the size criteria.
- If a larger file is submitted later, the difference in fees must be paid.
The MPEP states: Any “Sequence Listing” ASCII plain text file of 300 MB or more is subject to a fee under 37 CFR 1.21(o) to manage handling of the oversized submission (37 CFR 1.52(f)(3)). Pricing for this fee is divided into two tiers with Tier 1 for file sizes 300 MB to 800 MB and Tier 2 for file sizes greater than 800 MB.
It’s important to note that these fees are designed to encourage applicants to include only essential sequence data in their Sequence Listings, thereby reducing strain on USPTO resources.
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MPEP 2422.07 – Requirements For Compliance And Consequences Of Non – Compliance (1)
For patent applications filed on or after January 1, 2022, the USPTO has specific procedures for handling defective sequence listings. According to MPEP 2422.07:
“Applications filed on or after January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be accepted and the defective sequence listing will be treated in accordance with 37 CFR 1.52(e)(8).”
This means:
- The application will be accepted for filing.
- The applicant will be notified of the defective sequence listing.
- The applicant will be given a period of time to correct the defective sequence listing.
- If the defect is not corrected within the specified time, the application may be held abandoned.
It’s important to note that this procedure differs from that for applications filed before January 1, 2022, which were subject to different rules regarding sequence listing defects.
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MPEP 2423.02 – Depiction Of Coding Regions (1)
According to the MPEP, amino acid sequences must be set forth separately under certain conditions. Specifically:
“When the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).”
This means that if the amino acid sequence derived from the coding regions meets the minimum length requirements specified in 37 CFR 1.821(a), it must be presented as a separate sequence in the patent application, in addition to being depicted below the corresponding codons.
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MPEP 2427 – Form Paragraphs For Applications Subject To Wipo St.25 (1)
Non-compliance with Sequence Listing requirements can have significant consequences for patent applications. According to MPEP 2427, consequences may include:
- Delayed examination of the application
- Issuance of a notice of non-compliant amendment
- Requirement to submit a compliant Sequence Listing and associated documentation
- Potential loss of filing date if the non-compliance is not corrected in a timely manner
The USPTO uses various form paragraphs (e.g., ¶ 24.01 – ¶ 24.17) to notify applicants of specific deficiencies and required responses. For example, form paragraph ¶ 24.02 states: “This application fails to comply with the requirements of 37 CFR 1.821 – 1.825 because it does not contain a ‘Sequence Listing’ as a separate part of the disclosure or a CRF of the ‘Sequence Listing’.”
Applicants must address these issues promptly to avoid potential delays or other negative impacts on their patent applications.
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MPEP 2500 – Maintenance Fees (11)
Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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If you miss both the maintenance fee payment and the 6-month grace period, your patent will expire. However, the USPTO may accept late payments under certain conditions. According to MPEP 2501:
“The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional.”
To reinstate the patent, you must file a petition showing the delay was unintentional and pay the maintenance fee along with any required surcharges. If accepted, “the patent shall be considered as not having expired at the end of the grace period.”
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A terminal disclaimer can affect the term of a patent, but it does not change the maintenance fee payment requirements. According to MPEP 2520:
“The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between the latest due date and the term set in 35 U.S.C. 154, it is still required that the entire maintenance fee amount for the due date be paid.”
This means that even if a terminal disclaimer shortens the patent term, you are still obligated to pay the full maintenance fee for each due date that occurs before the patent expires. The USPTO does not prorate or reduce maintenance fees based on a shortened patent term resulting from a terminal disclaimer.
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According to MPEP 2515, anyone can pay maintenance fees for a patent. Specifically, the section states:
“The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee.“
This means that the patent owner, a legal representative, or even a third party can submit the payment. No special authorization is required for someone other than the patentee to pay the fees.
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An attorney can withdraw from representation in a patent case by following these steps:
- File a request to withdraw in accordance with 37 CFR 1.36.
- The request should include the correspondence address of the applicant or patent owner.
- If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
- The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.
As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“
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Are maintenance fees required for all types of patents?
No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:
“Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents.“
Here’s a breakdown of maintenance fee requirements by patent type:
- Utility patents: Subject to maintenance fees
- Design patents: Not subject to maintenance fees
- Plant patents (filed before June 8, 1995): Not subject to maintenance fees
- Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
- Reissue patents: Subject to maintenance fees if the original patent was subject to them
It’s crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.
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There are two primary methods to check the maintenance fee payment status of a patent:
- Online: Visit the USPTO’s Maintenance Fee webpage. Enter the patent number and corresponding application number in the appropriate fields.
- By Phone: Call the USPTO’s Maintenance Fee Branch. Note that telephone status requests are limited to two patent numbers per call.
As stated in the MPEP: “Maintenance fee status information for a patent of interest can be obtained over the internet by entering the patent number and the corresponding application number in the appropriate spaces on the webpage available at https://fees.uspto.gov/MaintenanceFees.”
To learn more:
To check the maintenance fee payment status for a specific patent, you can use the following methods:
- Visit the USPTO’s Patent Maintenance Fees Storefront and enter the patent number.
- Use the Patent Application Information Retrieval (PAIR) system to access detailed maintenance fee information.
- Contact the USPTO’s Office of Finance directly at 571-272-6500.
According to MPEP 2570, “The Office will respond to requests for the maintenance fee status of patents. The Office will provide the status including the amount of any maintenance fee paid, the date paid, and any expiration date.”
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“Unintentional delay” in paying maintenance fees is a crucial concept for reinstating expired patents. According to MPEP 2590:
“A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee.”
This means that the entire period of delay, from the missed payment deadline to the filing of the petition, must be unintentional. Intentional delays, even after discovering the missed payment, can disqualify a patent from reinstatement.
For delays exceeding two years, the USPTO requires additional explanation to establish that the entire delay was unintentional.
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The signature requirements for a petition for delayed payment of maintenance fees depend on when the application was filed, as outlined in MPEP 2590:
For applications filed on or after September 16, 2012:
According to 37 CFR 1.33(b), the petition must be signed by:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under 37 CFR 1.34
- The applicant (37 CFR 1.42)
For juristic entities, the petition must be signed by a patent practitioner unless otherwise specified.
For applications filed before September 16, 2012:
Pre-AIA 37 CFR 1.33(b) allows the petition to be signed by:
- A patent practitioner of record
- A patent practitioner not of record acting in a representative capacity
- An assignee as provided for under pre-AIA 37 CFR 3.71(b)
- All of the applicants (pre-AIA 37 CFR 1.41(b))
It’s crucial to ensure the correct person signs the petition to avoid potential delays or rejections.
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Failure to pay a maintenance fee on time can result in the expiration of the patent. According to MPEP 2506:
“A patent that expires for failure of payment will expire on the day following the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.”
The expiration occurs even if the last day for payment falls on a weekend or holiday. The MPEP clarifies:
“For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired after midnight on Saturday (e.g., on Sunday) if the maintenance fee and surcharge were not paid on the following Monday.”
It’s crucial for patent owners to be aware of these deadlines and ensure timely payment to maintain their patent rights.
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MPEP 2501 – Introduction (1)
If you miss both the maintenance fee payment and the 6-month grace period, your patent will expire. However, the USPTO may accept late payments under certain conditions. According to MPEP 2501:
“The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional.”
To reinstate the patent, you must file a petition showing the delay was unintentional and pay the maintenance fee along with any required surcharges. If accepted, “the patent shall be considered as not having expired at the end of the grace period.”
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MPEP 2504 – Patents Subject To Maintenance Fees (1)
Are maintenance fees required for all types of patents?
No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:
“Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents.“
Here’s a breakdown of maintenance fee requirements by patent type:
- Utility patents: Subject to maintenance fees
- Design patents: Not subject to maintenance fees
- Plant patents (filed before June 8, 1995): Not subject to maintenance fees
- Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
- Reissue patents: Subject to maintenance fees if the original patent was subject to them
It’s crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.
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MPEP 2506 – Times For Submitting Maintenance Fee Payments (1)
Failure to pay a maintenance fee on time can result in the expiration of the patent. According to MPEP 2506:
“A patent that expires for failure of payment will expire on the day following the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.”
The expiration occurs even if the last day for payment falls on a weekend or holiday. The MPEP clarifies:
“For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired after midnight on Saturday (e.g., on Sunday) if the maintenance fee and surcharge were not paid on the following Monday.”
It’s crucial for patent owners to be aware of these deadlines and ensure timely payment to maintain their patent rights.
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MPEP 2515 – Information Required For Submission Of Maintenance Fee Payment (1)
According to MPEP 2515, anyone can pay maintenance fees for a patent. Specifically, the section states:
“The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee.“
This means that the patent owner, a legal representative, or even a third party can submit the payment. No special authorization is required for someone other than the patentee to pay the fees.
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MPEP 2520 – Maintenance Fee Amounts (1)
A terminal disclaimer can affect the term of a patent, but it does not change the maintenance fee payment requirements. According to MPEP 2520:
“The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between the latest due date and the term set in 35 U.S.C. 154, it is still required that the entire maintenance fee amount for the due date be paid.”
This means that even if a terminal disclaimer shortens the patent term, you are still obligated to pay the full maintenance fee for each due date that occurs before the patent expires. The USPTO does not prorate or reduce maintenance fees based on a shortened patent term resulting from a terminal disclaimer.
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MPEP 2560 – Revocation Of Power Of Attorney And Withdrawal Of Attorney (1)
An attorney can withdraw from representation in a patent case by following these steps:
- File a request to withdraw in accordance with 37 CFR 1.36.
- The request should include the correspondence address of the applicant or patent owner.
- If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
- The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.
As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“
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MPEP 2570 – Maintenance Fee Payment Status Requests (2)
There are two primary methods to check the maintenance fee payment status of a patent:
- Online: Visit the USPTO’s Maintenance Fee webpage. Enter the patent number and corresponding application number in the appropriate fields.
- By Phone: Call the USPTO’s Maintenance Fee Branch. Note that telephone status requests are limited to two patent numbers per call.
As stated in the MPEP: “Maintenance fee status information for a patent of interest can be obtained over the internet by entering the patent number and the corresponding application number in the appropriate spaces on the webpage available at https://fees.uspto.gov/MaintenanceFees.”
To learn more:
To check the maintenance fee payment status for a specific patent, you can use the following methods:
- Visit the USPTO’s Patent Maintenance Fees Storefront and enter the patent number.
- Use the Patent Application Information Retrieval (PAIR) system to access detailed maintenance fee information.
- Contact the USPTO’s Office of Finance directly at 571-272-6500.
According to MPEP 2570, “The Office will respond to requests for the maintenance fee status of patents. The Office will provide the status including the amount of any maintenance fee paid, the date paid, and any expiration date.”
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MPEP 2575 – Notices (1)
Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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MPEP 2590 – Acceptance Of Delayed Payment Of Maintenance Fee In Expired Patent To Reinstate Patent (2)
“Unintentional delay” in paying maintenance fees is a crucial concept for reinstating expired patents. According to MPEP 2590:
“A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee.”
This means that the entire period of delay, from the missed payment deadline to the filing of the petition, must be unintentional. Intentional delays, even after discovering the missed payment, can disqualify a patent from reinstatement.
For delays exceeding two years, the USPTO requires additional explanation to establish that the entire delay was unintentional.
To learn more:
The signature requirements for a petition for delayed payment of maintenance fees depend on when the application was filed, as outlined in MPEP 2590:
For applications filed on or after September 16, 2012:
According to 37 CFR 1.33(b), the petition must be signed by:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under 37 CFR 1.34
- The applicant (37 CFR 1.42)
For juristic entities, the petition must be signed by a patent practitioner unless otherwise specified.
For applications filed before September 16, 2012:
Pre-AIA 37 CFR 1.33(b) allows the petition to be signed by:
- A patent practitioner of record
- A patent practitioner not of record acting in a representative capacity
- An assignee as provided for under pre-AIA 37 CFR 3.71(b)
- All of the applicants (pre-AIA 37 CFR 1.41(b))
It’s crucial to ensure the correct person signs the petition to avoid potential delays or rejections.
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MPEP 2600 – Optional Inter Partes Reexamination (11)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
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In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
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Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
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The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
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There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
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The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
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No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
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Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
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The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662:
The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).
Key points to remember:
- The standard appeal period is two months from the date of the Board decision.
- If a request for rehearing is filed, the two-month period starts from the final Board action on that request.
- The appeal must be made to the U.S. Court of Appeals for the Federal Circuit.
It’s crucial to adhere to these deadlines, as failing to file a timely notice of appeal may result in the loss of appeal rights. Parties should also be aware of the procedures for requesting a rehearing, as this can affect the timeline for appealing to the Federal Circuit.
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The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
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While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:
“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”
The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.
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MPEP 2613 – Representative Of Requester (1)
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
To learn more:
MPEP 2623 – Withdrawal Of Attorney Or Agent (1)
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
To learn more:
MPEP 2642 – Criteria For Deciding Request (1)
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
MPEP 2662 – Time For Response And Comments (1)
The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662:
The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).
Key points to remember:
- The standard appeal period is two months from the date of the Board decision.
- If a request for rehearing is filed, the two-month period starts from the final Board action on that request.
- The appeal must be made to the U.S. Court of Appeals for the Federal Circuit.
It’s crucial to adhere to these deadlines, as failing to file a timely notice of appeal may result in the loss of appeal rights. Parties should also be aware of the procedures for requesting a rehearing, as this can affect the timeline for appealing to the Federal Circuit.
To learn more:
MPEP 2666.02 – Correction Of Patent Drawings (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 2675 – Appellant Brief (1)
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
To learn more:
MPEP 2681 – Board Decision (1)
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
MPEP 2691 – Notice Of Inter Partes Reexamination Certificate Issuance In Official Gazette (1)
Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
To learn more:
MPEP 2693 – Intervening Rights (1)
Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
To learn more:
MPEP 2695 – Reexamination Of A Reexamination (1)
While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:
“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”
The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.
To learn more:
MPEP 2696 – Uspto Forms To Be Used In Inter Partes Reexamination (1)
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
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MPEP 2700 – Patent Terms (7)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
To learn more:
The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
To learn more:
MPEP 2701 – Patent Term (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
MPEP 2731 – Period Of Adjustment (1)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
MPEP 2732 – Reduction Of Period Of Adjustment Of Patent Term (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2736 – Third – Party Papers (1)
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
MPEP 2751 – Eligibility Requirements (1)
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
MPEP 2756 – Correspondence Between The Uspto And The Regulatory Agency (1)
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
To learn more:
MPEP 2757 – Regulatory Agency Determination Of The Length Of The Regulatory Review Period (1)
The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
To learn more:
MPEP 2800 – Supplemental Examination (4)
How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
To learn more:
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806:
- Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing.
- For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
- Include the control number assigned to the reexamination proceeding.
- Clearly mark all papers with “EX PARTE REEXAMINATION” to ensure proper routing.
The MPEP states: “Any paper filed in an ex parte reexamination proceeding resulting from a supplemental examination proceeding should be filed as provided in 37 CFR 1.1(c).” This ensures that your documents are properly processed and routed within the USPTO.
To learn more:
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
If a request for supplemental examination fails to comply with 37 CFR 1.610, the following process occurs:
- The Office will notify the patent owner of any defects in the request.
- The patent owner is given a non-extendable period of 30 days to correct the defects.
- If the defects are not corrected within the 30-day period, the request will not be granted a filing date and will not be entitled to a refund of the fee for reexamination.
As stated in the MPEP 2812: “If the request fails to comply with any of the requirements of 37 CFR 1.610, the patent owner will be given a single opportunity to correct the defects in the request.”
To learn more:
MPEP 2805 – Correspondence With Patent Owner; Patent Owner Address (1)
How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
To learn more:
MPEP 2806 – How To File Papers In A Supplemental Examination Proceeding And In Any Resulting Ex Parte Reexamination Proceeding (1)
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806:
- Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing.
- For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
- Include the control number assigned to the reexamination proceeding.
- Clearly mark all papers with “EX PARTE REEXAMINATION” to ensure proper routing.
The MPEP states: “Any paper filed in an ex parte reexamination proceeding resulting from a supplemental examination proceeding should be filed as provided in 37 CFR 1.1(c).” This ensures that your documents are properly processed and routed within the USPTO.
To learn more:
MPEP 2812 – Initial Processing Of A Request For Supplemental Examination (1)
If a request for supplemental examination fails to comply with 37 CFR 1.610, the following process occurs:
- The Office will notify the patent owner of any defects in the request.
- The patent owner is given a non-extendable period of 30 days to correct the defects.
- If the defects are not corrected within the 30-day period, the request will not be granted a filing date and will not be entitled to a refund of the fee for reexamination.
As stated in the MPEP 2812: “If the request fails to comply with any of the requirements of 37 CFR 1.610, the patent owner will be given a single opportunity to correct the defects in the request.”
To learn more:
MPEP 2816.03 – Content Of The Determination (1)
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
To learn more:
MPEP 2900 – International Design Applications (7)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
Information Disclosure Statement (IDS) requirements for international design applications designating the United States are similar to those for domestic national applications:
- The duty to disclose information material to patentability applies to individuals associated with the filing and prosecution of the application.
- An IDS must adhere to the requirements set forth in 37 CFR 1.97, 1.98, and 1.33(b) for consideration by the examiner.
- An IDS filed within three months of the publication date of the international registration will be considered by the Office under 37 CFR 1.97(b)(5).
- IDSs filed after this period may be considered as provided in 37 CFR 1.97.
As stated in the MPEP: An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56.
To learn more:
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more:
The procedure for seeking relief from prescribed time limits in international design applications is outlined in 37 CFR 1.1051. This procedure allows applicants to excuse unintentional delays in meeting time limits under the Hague Agreement for requirements related to international design applications.
The key components of this procedure include:
- Filing a petition with the USPTO
- Providing necessary documentation
- Paying required fees
- Submitting a statement of unintentional delay
- Filing a terminal disclaimer in certain cases
As stated in the MPEP: “Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional.“
To learn more:
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
To learn more:
The USPTO handles translation errors in foreign priority documents for international design applications as follows:
- If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error.
- However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.
This approach is outlined in MPEP 2920.05(d), which states:
“Where an error in the translation of the foreign priority document is only discovered after publication of the international registration, the Office will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.”
It’s important for applicants to ensure accurate translations are provided initially to avoid potential issues later in the application process.
To learn more:
MPEP 2904 – Who May File An International Design Application (1)
The concept of a “real and effective industrial or commercial establishment” is mentioned in MPEP 2904 as one of the criteria for eligibility to file an international design application. The MPEP states:
“Any person that … has a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.”
While the MPEP doesn’t provide a specific definition, this generally refers to a genuine and active business presence in a Contracting Party’s territory. Factors that might be considered include:
- Physical business location
- Ongoing business activities
- Employees or staff
- Commercial transactions
- Manufacturing or production facilities
It’s important to note that this is distinct from a mere postal address or nominal office. The establishment should demonstrate a real connection to the Contracting Party’s territory.
To learn more:
MPEP 2912 – Correspondence In Respect Of International Design Applications Filed With The Uspto As An Office Of Indirect Filing (1)
According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
To learn more:
MPEP 2913 – Relief From Prescribed Time Limits (1)
The procedure for seeking relief from prescribed time limits in international design applications is outlined in 37 CFR 1.1051. This procedure allows applicants to excuse unintentional delays in meeting time limits under the Hague Agreement for requirements related to international design applications.
The key components of this procedure include:
- Filing a petition with the USPTO
- Providing necessary documentation
- Paying required fees
- Submitting a statement of unintentional delay
- Filing a terminal disclaimer in certain cases
As stated in the MPEP: “Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional.“
To learn more:
MPEP 2920.05 – Examination (1)
Information Disclosure Statement (IDS) requirements for international design applications designating the United States are similar to those for domestic national applications:
- The duty to disclose information material to patentability applies to individuals associated with the filing and prosecution of the application.
- An IDS must adhere to the requirements set forth in 37 CFR 1.97, 1.98, and 1.33(b) for consideration by the examiner.
- An IDS filed within three months of the publication date of the international registration will be considered by the Office under 37 CFR 1.97(b)(5).
- IDSs filed after this period may be considered as provided in 37 CFR 1.97.
As stated in the MPEP: An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56.
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MPEP 2920.05(D) – Foreign Priority (2)
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
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The USPTO handles translation errors in foreign priority documents for international design applications as follows:
- If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error.
- However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.
This approach is outlined in MPEP 2920.05(d), which states:
“Where an error in the translation of the foreign priority document is only discovered after publication of the international registration, the Office will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.”
It’s important for applicants to ensure accurate translations are provided initially to avoid potential issues later in the application process.
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MPEP 2920.05(F) – Information Disclosure Statement In An International Design Application Designating The United States (1)
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
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MPEP 300 – Ownership and Assignment (49)
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
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.
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.
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.
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.
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.
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.
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.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
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 new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
What is the purpose of the Issue Notification in the patent application process?
The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:
- Informs the applicant of the official issue date of their patent
- Provides the assigned patent number
- Serves as confirmation that the patent will be granted
- Helps applicants plan for any post-issuance actions or maintenance fees
The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.
For more information on issue date, visit: issue date.
For more information on patent grant, visit: patent grant.
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
For more information on recording documents, visit: recording documents.
A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.
The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”
For more detailed information on cover sheets, refer to MPEP § 302.07.
For more information on cover sheet, visit: cover sheet.
For more information on document submission, visit: document submission.
For more information on USPTO requirements, visit: USPTO requirements.
Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:
‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’
This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.
How long does it take for a patent assignment to be recorded by the USPTO?
The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:
- Method of submission (electronic vs. paper)
- Completeness and accuracy of the submitted documents
- Current USPTO workload
According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.
For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.
According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:
- Certificates issued by appropriate authorities showing a change of name of a business
- Certificates showing a merger of businesses
The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.
Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:
- Submit the license document to the USPTO’s Assignment Recordation Branch
- Include a cover sheet with the required information
- Pay the appropriate fee
MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.
Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
Why doesn’t the USPTO return original assignment documents after recording?
The USPTO does not return original assignment documents after recording to maintain a permanent, unaltered record and to prevent potential disputes or fraud. According to MPEP 302.01: ‘The USPTO will not return documents filed for recording.’ This policy serves several purposes:
- Ensures the integrity of the recorded documents
- Prevents alterations or substitutions after recording
- Maintains a consistent and reliable archive
- Reduces administrative burden and potential for loss
By keeping all submitted documents, the USPTO can provide certified copies if needed for legal or business purposes, ensuring a reliable chain of title for patent rights.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
Recording a patent assignment with the USPTO is crucial for several reasons:
- Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
- Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
- Chain of Title: It helps maintain a clear chain of title for the patent or application.
- Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.
The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
To correct a typographical error in a patent assignment, you need to submit several documents. According to MPEP 323.01(b), the required documents include:
- A copy of the originally recorded papers
- A cover sheet
- The required fee for each application or patent to be corrected
If the assignor is not available to make the correction, the assignee must also provide:
- An affidavit or declaration identifying the error and requesting correction
The MPEP states:
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).
Ensure all documents are properly prepared and submitted to avoid delays in processing.
To learn more:
When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
To learn more:
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:
- Visit the USPTO Patent Assignment Search page
- Enter relevant information such as patent number, assignee name, or assignor name
- Review the search results for the desired assignment information
The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’
What types of documents can be recorded as assignments with the USPTO?
The USPTO allows for the recording of various types of documents related to patent ownership. According to MPEP 302:
“The United States Patent and Trademark Office (USPTO) records assignments, grants, and similar instruments relating to interests in patents and applications as provided in 37 CFR Part 3.”
Types of documents that can be recorded include:
- Assignments: Transfers of the entire right, title, and interest in a patent or application
- Security Agreements: Documents creating a security interest in a patent or application
- Licenses: Agreements granting rights to use or practice a patented invention
- Releases: Documents releasing previous security interests or other encumbrances
- Name Changes: Documents evidencing a change in the name of the owner of record
- Mergers: Documents showing the merger of companies and the resulting transfer of patent rights
It’s important to note that the USPTO records these documents without making a determination of their validity. As stated in MPEP 302, “The recording of a document pursuant to 37 CFR 3.11 is not a determination by the USPTO of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
For more information on patent assignments, visit: patent assignments.
No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:
‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’
This restriction extends for one year after their employment at the USPTO ends.
The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335:
- The patentee, assignee, or licensee is primarily responsible for filing the notice.
- If the required notice is not filed by the designated party, any party to the arbitration proceeding may file the notice.
35 U.S.C. 294(d) states: “When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.”
This flexibility ensures that the USPTO is informed of arbitration outcomes, even if the primary responsible party fails to file the notice.
If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):
- First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
- If unsuccessful, submit the following to the Assignment Services Division:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration:
- Identifying yourself as the correct owner
- Stating that the previously recorded document contained erroneous information
- Providing the reel and frame number of the incorrectly recorded document
- The required fee for each application or patent to be corrected
The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.
To learn more:
A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.
The chain of title includes:
- Original patent assignment
- Subsequent transfers of ownership
- Business name changes
- Mergers and acquisitions
- Any other events affecting patent ownership
Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.
To correct a typographical error in a recorded assignment document, you have two main options:
- Create and record a new document
- Make corrections to the original document and re-record it
According to MPEP 323.01(b):
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
This means that the assignor (the party transferring the rights) is typically responsible for correcting such errors.
To learn more:
According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:
- A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
- All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.
The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”
New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
To learn more:
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
No, the USPTO cannot record a non-English assignment document without an accompanying English translation. MPEP 302.02 clearly states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This policy ensures that all recorded documents are accessible and understandable to USPTO examiners and the public. Attempting to record a non-English document without a translation will result in the document being rejected for recordation.
To learn more:
The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
To learn more:
Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:
- Multiple partial assignees of the patent property
- Multiple inventors who have not assigned their rights
- A combination of partial assignee(s) and inventor(s) who have not assigned their rights
In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.
If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:
‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’
The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on error correction, visit: error correction.
For more information on patent issuance, visit: patent issuance.
For more information on reissue, visit: reissue.
MPEP 301-Ownership/Assignability of Patents and Applications (9)
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.
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.
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.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:
‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’
This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.
Recording a patent assignment with the USPTO is crucial for several reasons:
- Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
- Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
- Chain of Title: It helps maintain a clear chain of title for the patent or application.
- Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.
The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.
The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:
- Visit the USPTO Patent Assignment Search page
- Enter relevant information such as patent number, assignee name, or assignor name
- Review the search results for the desired assignment information
The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’
Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:
- Multiple partial assignees of the patent property
- Multiple inventors who have not assigned their rights
- A combination of partial assignee(s) and inventor(s) who have not assigned their rights
In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.
MPEP 302 – Recording of Assignment Documents (7)
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.
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
For more information on recording documents, visit: recording documents.
How long does it take for a patent assignment to be recorded by the USPTO?
The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:
- Method of submission (electronic vs. paper)
- Completeness and accuracy of the submitted documents
- Current USPTO workload
According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.
For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.
Why doesn’t the USPTO return original assignment documents after recording?
The USPTO does not return original assignment documents after recording to maintain a permanent, unaltered record and to prevent potential disputes or fraud. According to MPEP 302.01: ‘The USPTO will not return documents filed for recording.’ This policy serves several purposes:
- Ensures the integrity of the recorded documents
- Prevents alterations or substitutions after recording
- Maintains a consistent and reliable archive
- Reduces administrative burden and potential for loss
By keeping all submitted documents, the USPTO can provide certified copies if needed for legal or business purposes, ensuring a reliable chain of title for patent rights.
What types of documents can be recorded as assignments with the USPTO?
The USPTO allows for the recording of various types of documents related to patent ownership. According to MPEP 302:
“The United States Patent and Trademark Office (USPTO) records assignments, grants, and similar instruments relating to interests in patents and applications as provided in 37 CFR Part 3.”
Types of documents that can be recorded include:
- Assignments: Transfers of the entire right, title, and interest in a patent or application
- Security Agreements: Documents creating a security interest in a patent or application
- Licenses: Agreements granting rights to use or practice a patented invention
- Releases: Documents releasing previous security interests or other encumbrances
- Name Changes: Documents evidencing a change in the name of the owner of record
- Mergers: Documents showing the merger of companies and the resulting transfer of patent rights
It’s important to note that the USPTO records these documents without making a determination of their validity. As stated in MPEP 302, “The recording of a document pursuant to 37 CFR 3.11 is not a determination by the USPTO of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
For more information on patent assignments, visit: patent assignments.
MPEP 303 – Assignment Documents Not Endorsed on Pending Applications (1)
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
MPEP 307 – Issue to Non – Applicant Assignee (3)
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.
Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
MPEP 308 – Issue to Applicant (3)
What is the purpose of the Issue Notification in the patent application process?
The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:
- Informs the applicant of the official issue date of their patent
- Provides the assigned patent number
- Serves as confirmation that the patent will be granted
- Helps applicants plan for any post-issuance actions or maintenance fees
The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.
For more information on issue date, visit: issue date.
For more information on patent grant, visit: patent grant.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:
‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’
The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on error correction, visit: error correction.
For more information on patent issuance, visit: patent issuance.
For more information on reissue, visit: reissue.
MPEP 309 – Restrictions Upon Employees of U.S. Patent and Trademark Office (1)
No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:
‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’
This restriction extends for one year after their employment at the USPTO ends.
MPEP 310 – Government License Rights to Contractor – Owned Inventions Made Under Federally Sponsored Research and Development (4)
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.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
MPEP 311 – Filing of Notice of Arbitration Awards (1)
The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335:
- The patentee, assignee, or licensee is primarily responsible for filing the notice.
- If the required notice is not filed by the designated party, any party to the arbitration proceeding may file the notice.
35 U.S.C. 294(d) states: “When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.”
This flexibility ensures that the USPTO is informed of arbitration outcomes, even if the primary responsible party fails to file the notice.
MPEP 314 – Certificates of Change of Name or of Merger (3)
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
According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:
- Certificates issued by appropriate authorities showing a change of name of a business
- Certificates showing a merger of businesses
The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.
A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.
The chain of title includes:
- Original patent assignment
- Subsequent transfers of ownership
- Business name changes
- Mergers and acquisitions
- Any other events affecting patent ownership
Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.
MPEP 315 – Indexing Against a Recorded Certificate (1)
A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.
The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”
For more detailed information on cover sheets, refer to MPEP § 302.07.
For more information on cover sheet, visit: cover sheet.
For more information on document submission, visit: document submission.
For more information on USPTO requirements, visit: USPTO requirements.
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 (45)
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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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.
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.
A Customer Number is a USPTO-assigned number that can be used to:
- Designate the correspondence address for a patent application or patent
- Designate the fee address for a patent
- Submit a list of practitioners with power of attorney
According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”
Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.
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 more information on power of attorney, visit: power of attorney.
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.
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Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
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What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
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Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
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Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:
If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.
To proceed without all signatures, the applicant must:
- File the application on behalf of themselves and the non-signing inventor
- Provide proof of the inventor’s unavailability or refusal
- Submit an oath or declaration by the other inventor(s)
- Include a petition under 37 CFR 1.47
The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.
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According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:
“The period for reply to such a notice is normally set at 3 months.”
During this 3-month period, the applicant must take one of the following actions:
- Appoint a new registered patent practitioner
- File a change of correspondence address
It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.
For more information on application abandonment, visit: application abandonment.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on response time, visit: response time.
For more information on USPTO notification, visit: USPTO notification.
Can a Canadian patent agent represent U.S. patent applicants before the USPTO?
Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:
‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’
This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.
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Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?
No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office.
(MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.
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MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
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There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
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The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):
“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”
This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.
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A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:
‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’
The process typically involves:
- An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
- The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
- If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.
It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.
For more information on juristic entity, visit: juristic entity.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
What is the significance of a power of attorney in patent applications?
A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.
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Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?
Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:
- The practitioner must submit a request to withdraw.
- The request must comply with 37 CFR 1.36.
- The USPTO must approve the withdrawal.
According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”
It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:
- Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
- The revocation must be signed by the applicant or patent owner.
- If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.
According to MPEP 402.02(a): “A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c).”
It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.
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A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
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When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
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What is the difference between a principal and an associate power of attorney in patent applications?
In patent applications, there is a distinction between principal and associate powers of attorney:
- Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
- Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.
According to MPEP 402.02(a):
“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”
It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.
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Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:
According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’
This means:
- The signer must have the legal authority to act on behalf of the entity.
- For corporations, this typically includes officers or agents appointed by the board.
- For partnerships, a partner may sign.
- For universities, an authorized official may sign.
It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.
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Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
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According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:
‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:
- (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
- (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
- (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
- (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’
These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.
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For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
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When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:
‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’
This means:
- The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
- The last provided correspondence address by the inventor(s) or assignee(s) will be used.
- All future communications from the USPTO will be sent to this address.
- It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.
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Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:
‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’
To revoke a power of attorney:
- File a new power of attorney form (PTO/AIA/82) with the USPTO.
- The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
- Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
- Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.
It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.
For more information on power of attorney, visit: power of attorney.
For more information on pro se, visit: pro se.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:
- If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
- If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
- If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.
The MPEP states:
In all of these situations, the most recently filed power of attorney will control.
This means that the latest power of attorney filed will take precedence over any previously filed ones.
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No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
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Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.
This means that the most recently filed power of attorney will control.
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When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
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To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:
- Check if the person is listed as the applicant or an assignee
- Verify if they are a registered patent practitioner
- Look for a power of attorney or authorization of agent document
- Confirm if they are named as an inventor in the application
The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):
For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.
If you’re unsure, it’s best to contact the USPTO directly for clarification.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):
“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”
This means that:
- For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
- For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.
These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.
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In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
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When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
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No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:
A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.
The USPTO takes the following steps to ensure compliance:
- Correspondence will be sent to the applicant or assignee at their address of record.
- If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
- Examiners are instructed not to hold interviews with suspended or excluded practitioners.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:
- The Office will not correspond with both an applicant and their attorney/agent.
- The Office will not correspond with more than one attorney/agent.
- If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.
According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”
Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”
Can a withdrawn attorney continue to receive Office communications for a patent application?
No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:
“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”
This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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MPEP 402 – Power of Attorney; Naming Representative (3)
A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:
‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’
The process typically involves:
- An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
- The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
- If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.
It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.
For more information on juristic entity, visit: juristic entity.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:
‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’
To revoke a power of attorney:
- File a new power of attorney form (PTO/AIA/82) with the USPTO.
- The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
- Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
- Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.
It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.
For more information on power of attorney, visit: power of attorney.
For more information on pro se, visit: pro se.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
MPEP 403 – Correspondence — With Whom Held; Customer Number Practice (3)
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.
A Customer Number is a USPTO-assigned number that can be used to:
- Designate the correspondence address for a patent application or patent
- Designate the fee address for a patent
- Submit a list of practitioners with power of attorney
According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”
Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.
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 more information on power of attorney, visit: power of attorney.
The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:
- The Office will not correspond with both an applicant and their attorney/agent.
- The Office will not correspond with more than one attorney/agent.
- If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.
According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”
Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”
MPEP 406 – Death of Patent Practitioner (1)
According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:
“The period for reply to such a notice is normally set at 3 months.”
During this 3-month period, the applicant must take one of the following actions:
- Appoint a new registered patent practitioner
- File a change of correspondence address
It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.
For more information on application abandonment, visit: application abandonment.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on response time, visit: response time.
For more information on USPTO notification, visit: USPTO notification.
MPEP 407 – Suspended or Excluded Patent Practitioner (1)
No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:
A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.
The USPTO takes the following steps to ensure compliance:
- Correspondence will be sent to the applicant or assignee at their address of record.
- If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
- Examiners are instructed not to hold interviews with suspended or excluded practitioners.
For more information on USPTO correspondence, visit: USPTO correspondence.
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 (34)
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.
To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:
Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
Key points to remember:
- Each distinct subject, inquiry, or order should be in a separate paper.
- This applies to both patent and trademark correspondence.
- Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.
If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.
Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.
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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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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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Are there any fee reductions or waivers available for USPTO patent fees?
Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:
- Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
- Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.
To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.
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What is the USPTO’s policy on federal holidays?
The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:
- The USPTO is closed on all federal holidays.
- Deadlines that fall on a federal holiday are extended to the next business day.
- Correspondence is not accepted or processed on federal holidays.
According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.
It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
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Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
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If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:
“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”
This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.
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If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):
In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.
It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.
No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.
However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
There are two main ways to obtain a receipt for items filed with the USPTO:
- For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
- For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.
The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)
How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- Wait for account approval and receive your account number
According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.
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The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
- Hand-delivery to the USPTO office.
Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.
As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”
Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”
If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
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Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
What are the signature requirements for patent practitioners in correspondence with the USPTO?
Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:
- They must personally sign correspondence using either a handwritten signature or an S-signature.
- An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
- The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).
According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.
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A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:
- Inventor’s name
- Application number (if known)
- Confirmation number (if known)
- Filing date
- Title of the invention
- Type of paper being filed
- Number of pages for each component
The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)
For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
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No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.
According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.
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Yes, you must assert small entity status separately for each related application. Specifically:
- Status must be established in each related, continuing, and reissue application
- Small entity status in one application does not affect the status of any other application or patent
- A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications
According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”
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What are the income limitations for qualifying as a micro entity?
To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:
“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))
For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.
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If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):
If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.
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If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
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To access USPTO public information facilities:
- A valid Public User or Visitor’s badge is required
- Badges can be obtained from the Office of Security next to the Public Search Facility
- An On-line Service Card is required for access to all Public Search Facilities and on-line systems
MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”
For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
MPEP 501 – Filing Papers With the U.S. Patent and Trademark Office (1)
The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:
Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
Key points to remember:
- Each distinct subject, inquiry, or order should be in a separate paper.
- This applies to both patent and trademark correspondence.
- Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.
If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.
Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.
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MPEP 502 – Depositing Correspondence (2)
What is the USPTO’s policy on federal holidays?
The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:
- The USPTO is closed on all federal holidays.
- Deadlines that fall on a federal holiday are extended to the next business day.
- Correspondence is not accepted or processed on federal holidays.
According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.
It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.
How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
MPEP 503 – Application Number and Filing Receipt (3)
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
There are two main ways to obtain a receipt for items filed with the USPTO:
- For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
- For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.
The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)
A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:
- Inventor’s name
- Application number (if known)
- Confirmation number (if known)
- Filing date
- Title of the invention
- Type of paper being filed
- Number of pages for each component
The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)
MPEP 505 – Date of Receipt Stamp (1)
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
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 507 – Drawing Review in the Office of Patent Application Processing (3)
If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
MPEP 509 – Payment of Fees (4)
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.
Are there any fee reductions or waivers available for USPTO patent fees?
Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:
- Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
- Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.
To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- Wait for account approval and receive your account number
According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.
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What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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MPEP 510 – U.S. Patent and Trademark Office Business Hours (2)
The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
To access USPTO public information facilities:
- A valid Public User or Visitor’s badge is required
- Badges can be obtained from the Office of Security next to the Public Search Facility
- An On-line Service Card is required for access to all Public Search Facilities and on-line systems
MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”
MPEP 511 – Postal Service Interruptions and Emergencies (1)
The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
- Hand-delivery to the USPTO office.
Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.
As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”
Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”
MPEP 512 – Certificate of Mailing or Transmission (3)
If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:
“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”
This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.
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If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):
In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.
It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.
No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.
However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.
On Sale (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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Or (E) (3)
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
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Or In Public Use (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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Or Otherwise Available To The Public) (1)
Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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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.
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Patent Law (720)
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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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 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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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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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 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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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
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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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.
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.
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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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.
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 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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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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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.
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.
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.
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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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.
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.
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).
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.
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.
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.
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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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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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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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.
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 terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
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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.
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 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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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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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 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 ‘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.
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.
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.
“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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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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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.
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)
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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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.
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For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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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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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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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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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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.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
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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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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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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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.
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 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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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:
“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:
- If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
- Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
- However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.
For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.
It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.
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A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
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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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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Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
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.
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 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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According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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The ‘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.
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.
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.
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
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Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
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Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
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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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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.”
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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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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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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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
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The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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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.
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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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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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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An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:
Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
Key points to remember:
- Each distinct subject, inquiry, or order should be in a separate paper.
- This applies to both patent and trademark correspondence.
- Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.
If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.
Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.
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The deadline for filing an unintentionally delayed priority claim is the later of:
- Four months from the actual filing date of the later-filed application, or
- Sixteen months from the filing date of the prior application
This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.
As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’
- The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
- The petition fee as set forth in § 1.17(m); and
- A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication 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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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.
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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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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Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
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To determine whether your patent application is subject to AIA (America Invents Act) or pre-AIA laws, you need to consider the effective filing date of your claimed invention. According to MPEP 2159:
“Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”
To determine which laws apply:
- Identify the effective filing date of your claimed invention.
- If the effective filing date is on or after March 16, 2013, your application is subject to AIA laws.
- If the effective filing date is before March 16, 2013, your application is subject to pre-AIA laws.
- For applications with multiple claims, if any claim has an effective filing date on or after March 16, 2013, the entire application is subject to AIA laws.
Consult with a patent attorney or agent for a precise determination, as the effective filing date can be affected by factors such as priority claims, continuation applications, and the specific content of the application.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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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.
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
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The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
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The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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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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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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A Customer Number is a USPTO-assigned number that can be used to:
- Designate the correspondence address for a patent application or patent
- Designate the fee address for a patent
- Submit a list of practitioners with power of attorney
According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”
Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.
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 more information on power of attorney, visit: power of attorney.
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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What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
Claiming 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).”
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
What is the purpose of the Issue Notification in the patent application process?
The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:
- Informs the applicant of the official issue date of their patent
- Provides the assigned patent number
- Serves as confirmation that the patent will be granted
- Helps applicants plan for any post-issuance actions or maintenance fees
The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.
For more information on issue date, visit: issue date.
For more information on patent grant, visit: patent grant.
The concept of “clear improvement” in MPEP § 2106.06(b) relates to the Alice/Mayo test by potentially allowing claims to bypass parts of the test. The MPEP states:
“Although the Federal Circuit held these claims eligible at Step 2A as not being directed to abstract ideas, it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being directed to an abstract idea.“
This means that if a claim shows a clear improvement to technology or computer functionality, it might be found eligible without going through the entire Alice/Mayo test. The claim could be considered eligible at Pathway A (streamlined analysis) or at Step 2A of the Alice/Mayo test, depending on the examiner’s assessment of the improvement.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior foreign application
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
The Image File Wrapper (IFW) system is an electronic system used by the USPTO to store and process patent application files. Key points about the IFW system and its impact on public access include:
- Paper components of application files are scanned to create electronic image files
- For IFW applications, the electronic file is the Official file
- No access is granted to original paper documents used to create the IFW file
- Processing and examination are conducted using electronic images
- IFW files for patented applications, published applications, or applications referenced in published documents are accessible through Patent Center on the USPTO website
- All patent applications filed after June 30, 2003, have been scanned into the IFW system
The IFW system has made it easier for the public to access eligible patent application files online through Patent Center, eliminating the need to physically inspect paper files in many cases.
The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.
37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:
- Obtain a Secrecy Order
- Declassify the application
- Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)
Additionally, per 37 CFR 5.1(e), “a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.”
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
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.
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The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
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How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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A “Sequence Listing” is a separate part of a patent application that contains disclosures of nucleotide and/or amino acid sequences, along with associated information, using a standardized format and symbols. According to MPEP 2421.01, it is required for applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a).
The MPEP states: 37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823.
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The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
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The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
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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.
Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
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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Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
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Yes, there are exceptions to the rule against using trademarks or trade names as claim limitations. The MPEP 2173.05(u) states:
“Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982) states that a trademark or trade name is permissible in a claim to identify the source of goods.“
This exception allows for the use of trademarks or trade names in claims under specific circumstances:
- When used to identify the source of goods, rather than the goods themselves.
- If the trademark or trade name is used in conjunction with the trademark’s generic terminology.
- When the use does not affect the clarity or definiteness of the claim.
However, it’s important to note that even when identifying the source, care should be taken to ensure the claim remains clear and definite.
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For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
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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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Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
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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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Are there any fee reductions or waivers available for USPTO patent fees?
Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:
- Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
- Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.
To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.
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‘Mental processes’ are concepts that can be performed in the human mind or with the aid of pen and paper. According to MPEP 2106.04(a)(2):
The courts consider a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.
Mental processes include:
- Observations
- Evaluations
- Judgments
- Opinions
Importantly, claims can recite a mental process even if they are performed on a computer. The MPEP states: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”
However, claims that cannot practically be performed in the human mind do not recite a mental process. For example, a claim to detecting suspicious activity by using network monitors and analyzing network packets would not be considered a mental process.
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Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states:
“A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or the time the invention was made for applications or patents subject to pre-AIA law.”
This means that the prior art must provide enough detail for someone skilled in the field to reproduce the invention without excessive difficulty.
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An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
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While using trademarks or trade names in patent claims can be problematic, they can be used more freely in the patent specification. Here are guidelines for proper use:
- Use the trademark or trade name in conjunction with the generic terminology.
- Indicate that the term is a trademark, e.g., by using the ™ or ® symbol.
- Clarify the source of the trademark or trade name.
- Provide a clear description of the product or material associated with the trademark.
The MPEP 608.01(v) provides guidance on the use of trademarks in patent applications:
“If the product to which the trademark refers is set forth in such language that its identity is clear, the identification is sufficient. Where the product is set forth in the specification in language which is not clear, the examiner should require the applicant to use language which is clear.“
By following these guidelines, you can use trademarks or trade names in the specification while maintaining clarity and avoiding potential indefiniteness issues.
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Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
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Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):
37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).
To change the order of inventors’ names, you must:
- Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
- Pay the processing fee set forth in 37 CFR 1.17(i).
Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.
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What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
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Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
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Yes, a continuation application can claim priority to multiple parent applications under certain conditions. According to MPEP 201.07:
‘A continuation application may be filed as a continuation of an earlier application of the same applicant… The continuation application may be filed before the patenting or abandonment of or termination of proceedings on the prior application.’
This means that:
- The continuation must have at least one common inventor with the parent application(s).
- The continuation must be filed while at least one of the parent applications is still pending.
- The continuation cannot introduce new matter beyond what was disclosed in the parent application(s).
When claiming priority to multiple parents, the continuation essentially combines the disclosures of the parent applications, as long as they form a continuous chain of copending applications.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
For more information on recording documents, visit: recording documents.
What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
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The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
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When claiming a genus in a patent application, working examples play an important role in demonstrating enablement. The MPEP 2164.02 provides guidance on this issue:
“For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation.”
Key points about working examples and genus claims:
- Representative examples can support enablement for the entire genus
- The examples should be considered along with the level of skill in the art and the specification’s information
- Proof of enablement for other members of the genus may be required if the examiner provides adequate reasons
- The examiner must establish that a person skilled in the art could not use the genus as a whole without undue experimentation
It’s important to note that the number of examples needed depends on the predictability of the art and the breadth of the claims.
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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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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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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 effective filing date for a claimed invention is determined as follows:
- The actual filing date of the application containing the claim, or
- The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit
The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
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What is the difference between a negative limitation and a disclaimer in patent claims?
While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:
Negative Limitations:
- Are part of the original claim language
- Explicitly state what is not included in the claimed invention
- Must have support in the original disclosure
- Example: “A composition free of copper”
Disclaimers:
- Are typically added after the original filing
- Used to overcome prior art rejections or avoid double patenting
- Can sometimes introduce limitations not originally disclosed
- Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”
The MPEP 2173.05(i) focuses primarily on negative limitations, stating:
“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”
This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.
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Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
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Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
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When a claim covers multiple structures or compositions, anticipation can occur if any one of those structures or compositions is known in the prior art. The MPEP 2131 cites a Federal Circuit case:
When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.
(Brown v. 3M)
This means that for a claim covering multiple options, finding just one of those options in the prior art can be sufficient for an anticipation rejection.
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The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
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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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Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
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The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
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What is the USPTO’s policy on federal holidays?
The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:
- The USPTO is closed on all federal holidays.
- Deadlines that fall on a federal holiday are extended to the next business day.
- Correspondence is not accepted or processed on federal holidays.
According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.
It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.
The ‘statement of unintentional delay’ is a crucial component of a petition to accept an unintentionally delayed priority claim. According to MPEP 214.02:
The Director may require additional information where there is a question whether the delay was unintentional.
This statement must affirm that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. It’s important to note that:
- The USPTO requires an additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.
- The statement must be signed by a person who has sufficient knowledge of the facts to support the statement.
- Providing an inadequate or insufficient explanation may lead to a request for further information, which could delay the petition process.
Applicants should be prepared to provide a detailed account of the circumstances that led to the delay, ensuring that it covers the entire period of delay and demonstrates that the delay was truly unintentional.
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35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
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A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.
The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”
For more detailed information on cover sheets, refer to MPEP § 302.07.
For more information on cover sheet, visit: cover sheet.
For more information on document submission, visit: document submission.
For more information on USPTO requirements, visit: USPTO requirements.
Under the new Sequence Rules, patent applicants must submit sequence listings in a specific format. MPEP 2412.01 states that “an applicant is required to submit sequence data… in eXtensible Markup Language (XML) format.”
This XML file must conform to the requirements specified in 37 CFR 1.831 – 1.834, which in turn reference particular paragraphs of WIPO Standard ST.26. The use of XML format ensures standardization and machine-readability of sequence data across different patent offices worldwide.
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Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
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To file a petition to accept an unintentionally delayed benefit claim, you should:
- File the petition under 37 CFR 1.78
- Explain the reasons for the delay and demonstrate that it was unintentional
- Pay the required petition fee
- Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)
As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”
For more detailed information on filing these petitions, refer to MPEP § 211.04.
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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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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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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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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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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Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:
If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.
To proceed without all signatures, the applicant must:
- File the application on behalf of themselves and the non-signing inventor
- Provide proof of the inventor’s unavailability or refusal
- Submit an oath or declaration by the other inventor(s)
- Include a petition under 37 CFR 1.47
The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.
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If a priority claim needs to be corrected after a patent has been issued, it must be done through a certificate of correction. The MPEP Section 213.04 states:
“If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.”
To obtain a certificate of correction, the patent owner must file a request with the USPTO, pay the required fee, and provide a statement explaining the error and how it occurred. The USPTO will then review the request and, if approved, issue a certificate of correction to be attached to the patent.
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The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP § 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
According to MPEP 203.05, there are four main reasons for patent application abandonment:
- Formal abandonment by the applicant or their representative
- Failure of the applicant to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, the passage of 12 months from the filing date
The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application
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Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:
‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’
This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.
There are three main types of national applications for patents in the United States:
- Nonprovisional applications filed under 35 U.S.C. 111(a)
- Provisional applications filed under 35 U.S.C. 111(b)
- International applications that have entered the national stage in the United States
As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”
For more information on international applications, visit: international applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
How long does it take for a patent assignment to be recorded by the USPTO?
The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:
- Method of submission (electronic vs. paper)
- Completeness and accuracy of the submitted documents
- Current USPTO workload
According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.
For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
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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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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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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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A statement under 37 CFR 1.97(e) is a declaration that either:
- Each item of information in the IDS was first cited in a foreign patent office communication no more than 3 months prior to the IDS filing, or
- No item in the IDS was cited by a foreign patent office, and no item was known to anyone with a duty of disclosure more than 3 months prior to the IDS filing.
This statement is required when submitting an IDS after a first Office action but before a final Office action, Notice of Allowance, or Quayle action, unless a fee is paid. It’s also required when submitting an IDS after a final Office action, Notice of Allowance, or Quayle action (along with the fee).
As stated in MPEP 609.04(b): “A statement under 37 CFR 1.97(e) can contain either of two statements. One statement is that each item of information in an information disclosure statement was first cited in any communication, such as a search report, from a patent office outside the U.S. in a counterpart foreign application not more than three months prior to the filing date of the statement.”
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If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:
- The IDS will not be considered by the examiner
- The IDS will be placed in the application file
- The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
- A petition under 37 CFR 1.313(c) is required to withdraw the application from issue
MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”
The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”
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A continuation application can have significant implications for the patent term. Here are key points to understand:
- Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
- 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
- No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
- Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.
It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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Working examples play a significant role in determining enablement for patent applications, although they are not always required. According to MPEP 2164.06:
“The presence of a working example in the specification is not always necessary to satisfy the enablement requirement. However, where a working example is necessary for enablement, the quantity of experimentation required must be determined.”
Key points about working examples:
- They can demonstrate the practicality and operability of the invention
- They provide concrete guidance on how to make and use the invention
- Their necessity depends on the nature of the invention and the state of the art
- In unpredictable arts, working examples may be more critical for enablement
- The absence of working examples may be overcome by other forms of disclosure
Examiners consider working examples as part of the overall assessment of enablement. While helpful, the lack of working examples does not automatically mean the application fails to meet the enablement requirement if other factors support enablement.
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Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:
‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’
Key differences between provisional and non-provisional applications:
- Provisional applications have a simplified filing process and lower fees.
- They do not require formal patent claims or an oath or declaration.
- Provisional applications are not examined and automatically expire after 12 months.
- To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.
Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.
For more information on Non-provisional application, visit: Non-provisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:
- Certificates issued by appropriate authorities showing a change of name of a business
- Certificates showing a merger of businesses
The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.
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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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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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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According to 35 U.S.C. 113, drawings are required ‘where necessary for the understanding of the subject matter sought to be patented.’ Specifically:
- For applications filed on or after December 18, 2013 (except design applications), drawings are not required to receive a filing date, but may still be necessary to fully disclose the invention.
- For applications filed before December 18, 2013, drawings were required at filing if necessary for understanding the invention.
- Design applications must include drawings to receive a filing date.
The USPTO recommends including drawings in most cases, as they help ensure the requirements of 35 U.S.C. 113 are met for any claimed invention.
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When referencing figures in the Brief Description of Drawings section of a patent application, you should:
- Refer to each figure by its number (e.g., Figure 1, Figure 2)
- Provide a brief explanation of what each figure represents
The MPEP 608.01(f) states:
The specification must contain or be amended to contain a brief description of the several views of the drawings.
For example:
Figure 1 is a perspective view of the invented device.
Figure 2 is a cross-sectional view of the device shown in Figure 1.
Keep the descriptions concise and avoid detailed explanations, which belong in the Detailed Description section.
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When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
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The basic filing fee for a provisional application must be paid either:
- At the time of filing, or
- Within the time period set forth in 37 CFR 1.53(g)
If no correspondence address is provided, the applicant has two months from the filing date to pay the basic filing fee, submit the cover sheet, and pay the surcharge. The MPEP states:
If no correspondence address has been provided, applicant has two months from the filing date to file the basic filing fee, cover sheet, and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the provisional application.(MPEP 601.01(b))
It’s important to note that timely payment of the filing fee is crucial if you intend to claim the benefit of the provisional application in a later-filed nonprovisional application.
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If you miss both the maintenance fee payment and the 6-month grace period, your patent will expire. However, the USPTO may accept late payments under certain conditions. According to MPEP 2501:
“The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional.”
To reinstate the patent, you must file a petition showing the delay was unintentional and pay the maintenance fee along with any required surcharges. If accepted, “the patent shall be considered as not having expired at the end of the grace period.”
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How does the preamble affect claim interpretation in patent applications?
The preamble can significantly affect claim interpretation in patent applications. According to MPEP 2111.02, the effect of the preamble on claim scope can be summarized as follows:
- If the body of the claim fully and intrinsically sets forth the complete invention, and the preamble merely states the purpose or intended use, the preamble is generally not considered a limitation.
- However, if the preamble is “necessary to give life, meaning, and vitality” to the claim, it must be construed as a limitation.
- The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case.
The MPEP states: “Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” This means that if the preamble introduces essential structure or steps, or if it’s necessary to understand the claim as a whole, it will be considered limiting.
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Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
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The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).
The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).
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For patent applications filed on or after January 1, 2022, the USPTO has specific procedures for handling defective sequence listings. According to MPEP 2422.07:
“Applications filed on or after January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be accepted and the defective sequence listing will be treated in accordance with 37 CFR 1.52(e)(8).”
This means:
- The application will be accepted for filing.
- The applicant will be notified of the defective sequence listing.
- The applicant will be given a period of time to correct the defective sequence listing.
- If the defect is not corrected within the specified time, the application may be held abandoned.
It’s important to note that this procedure differs from that for applications filed before January 1, 2022, which were subject to different rules regarding sequence listing defects.
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Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
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There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.
This means that:
- A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
- A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
- Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.
For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:
- For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
- All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
- Substitute specification: The Office may require a substitute specification for preliminary amendments.
The MPEP states:
Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.
It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:
Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.
For more information on continuation application, visit: continuation application.
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states:
“The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).”
However, the acceptability of the term depends on whether it can be interpreted by a person of ordinary skill in the art with reasonable certainty. If the term’s meaning is reasonably ascertainable in the context of the invention, it may be acceptable. Otherwise, it could render the claim indefinite.
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According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:
“The period for reply to such a notice is normally set at 3 months.”
During this 3-month period, the applicant must take one of the following actions:
- Appoint a new registered patent practitioner
- File a change of correspondence address
It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.
For more information on application abandonment, visit: application abandonment.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on response time, visit: response time.
For more information on USPTO notification, visit: USPTO notification.
No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
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No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
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Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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If an inventor has no middle name, their name should be formatted using only their given name (first name) and family name (last name). The MPEP 602.08(b) provides guidance on this:
If an inventor does not have a middle name or initial, then the field for middle name or initial should be left blank.
It’s important to note that the absence of a middle name should not be confused with the use of initials. If an inventor commonly uses initials in place of their full given name, this should be indicated appropriately on the application.
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An Information Disclosure Statement (IDS) is a mechanism by which patent applicants can comply with the duty of disclosure provided in 37 CFR 1.56. It allows applicants to submit information that is material to patentability to the U.S. Patent and Trademark Office (USPTO).
According to the MPEP, The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS.
This means that an IDS is a formal way to disclose relevant prior art and other information to the patent examiner.
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Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:
- Submit the license document to the USPTO’s Assignment Recordation Branch
- Include a cover sheet with the required information
- Pay the appropriate fee
MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.
Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.
Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements:
- Complete Conception: There must be evidence of complete conception by another person. The MPEP states:
Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
- Communication: The complete conception must be communicated to the alleged deriver. The MPEP clarifies:
Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.
Importantly, the party alleging derivation does not need to prove certain elements. The MPEP notes:
- An actual reduction to practice is not required to show derivation.
- The derivation does not need to be of public knowledge.
- The site of derivation does not need to be in the United States.
When evaluating evidence of derivation, patent examiners and the courts will consider these factors to determine if a rejection under pre-AIA 35 U.S.C. 102(f) is appropriate.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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What happens if an IDS is filed after the mailing of a final Office action?
If an Information Disclosure Statement (IDS) is filed after the mailing of a final Office action, the examiner will consider it according to specific guidelines:
- The IDS will be considered if it’s accompanied by either a statement as specified in 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p).
- If these requirements are not met, the IDS will be placed in the application file but will not be considered by the examiner.
As stated in MPEP 609.05(c): ‘Consideration by the examiner of an IDS submitted after the mailing of a final Office action is limited to the requirements set forth in 37 CFR 1.97(d) and to documents which the examiner determines to be relevant.’ This means that even if the IDS is considered, the examiner is not required to reopen prosecution or issue a new Office action based on the newly submitted information.
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The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01:
“Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.”
The MPEP emphasizes that many research tools, such as gas chromatographs and screening assays, have clear, specific, and unquestionable utility. The key is to distinguish between inventions with specifically identified substantial utility and those whose asserted utility requires further research to identify or confirm.
For intermediate products, the MPEP states that a claim to an intermediate product for use in making a final product that has no specific, substantial, and credible utility would not meet the utility requirement. The focus should be on whether the claimed invention has a real-world use that provides an immediate benefit to the public.
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Joint inventorship occurs when an invention is made by two or more persons jointly. According to 35 U.S.C. 116, joint inventors can apply for a patent even if:
- They did not physically work together or at the same time
- Each did not make the same type or amount of contribution
- Each did not contribute to every claim of the patent
The MPEP states: “A person who shares in the conception of a claimed invention is a joint inventor of that invention.”
This means that contributing to the inventive concept is crucial for joint inventorship.
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No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
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The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
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Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:
“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”
However, the MPEP also warns:
“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”
Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.
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The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:
1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.
2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.
3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.
4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.
5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.
As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
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If a sequence listing XML file is not submitted within the time period set in the notice, the application may be held abandoned. According to MPEP 2414:
“If applicant fails to timely provide the required sequence listing XML file, the application will be held abandoned.”
It’s crucial for applicants to respond promptly to any notices regarding sequence listing requirements to avoid potential abandonment of their application.
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How does the USPTO define ‘new matter’ in patent applications?
The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):
“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”
This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:
- Additional text in the specification
- New or modified claim elements
- Changes to drawings or the addition of new figures
- Incorporation of external references not properly incorporated on the filing date
It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”
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According to the MPEP, non-limiting examples of claims that are not directed to any of the statutory categories include:
- Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations
- Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave
- Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA)
The MPEP further clarifies: “Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture, and is not composed of matter such that it would qualify as a composition of matter.“
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A terminal disclaimer can affect the term of a patent, but it does not change the maintenance fee payment requirements. According to MPEP 2520:
“The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between the latest due date and the term set in 35 U.S.C. 154, it is still required that the entire maintenance fee amount for the due date be paid.”
This means that even if a terminal disclaimer shortens the patent term, you are still obligated to pay the full maintenance fee for each due date that occurs before the patent expires. The USPTO does not prorate or reduce maintenance fees based on a shortened patent term resulting from a terminal disclaimer.
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Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“
The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.
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What are “narrow and broader ranges” in the same claim?
“Narrow and broader ranges” in the same claim refer to situations where a patent claim includes both a specific value or narrow range and a broader range that encompasses the narrow range. The MPEP 2173.05(c) addresses this issue:
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”
For example, a claim might state “a length of 5 to 25 centimeters, preferably 15 to 20 centimeters.” This practice can lead to indefiniteness because:
- It’s unclear which range is actually being claimed
- The word “preferably” doesn’t clearly define the claim scope
- It may create uncertainty about the intended protection
Examiners must carefully evaluate such claims to ensure they meet the definiteness requirement under 35 U.S.C. 112(b).
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Why doesn’t the USPTO return original assignment documents after recording?
The USPTO does not return original assignment documents after recording to maintain a permanent, unaltered record and to prevent potential disputes or fraud. According to MPEP 302.01: ‘The USPTO will not return documents filed for recording.’ This policy serves several purposes:
- Ensures the integrity of the recorded documents
- Prevents alterations or substitutions after recording
- Maintains a consistent and reliable archive
- Reduces administrative burden and potential for loss
By keeping all submitted documents, the USPTO can provide certified copies if needed for legal or business purposes, ensuring a reliable chain of title for patent rights.
How should color drawings be submitted in patent applications?
Color drawings in patent applications require special handling:
- A petition for color drawings must be filed with the application.
- Three sets of color drawings or color photographs must be submitted.
- The specification must contain the reference to color drawings.
The MPEP 608.02 states: ‘Color drawings are not permitted in design applications. See 37 CFR 1.84(a)(2) and MPEP § 608.02(VIII).’
For utility patents, color drawings may be accepted if they are necessary for the understanding of the invention. However, they are not encouraged due to reproduction costs and potential issues with public access.
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Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
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Can a Canadian patent agent represent U.S. patent applicants before the USPTO?
Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:
‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’
This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.
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The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
Key points about restoration of the right of priority:
- It applies to both foreign priority claims and domestic benefit claims to provisional applications.
- The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
- The delay in filing the subsequent application must be unintentional.
- A petition for restoration of the right of priority must be filed.
The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.
For more information on PLTIA, visit: PLTIA.
For more information on unintentional delay, visit: unintentional delay.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
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When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
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What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
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The “Art Recognized Suitability for an Intended Purpose” doctrine is a legal principle in patent law that relates to the obviousness of an invention. It states that selecting a known material or component for its recognized suitability for an intended use can support a prima facie case of obviousness.
As stated in MPEP 2144.07:
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” in the landmark case of Sinclair & Carroll Co. v. Interchemical Corp.
This doctrine suggests that if a person of ordinary skill in the art would recognize a material or component as suitable for a particular purpose, using that material or component for that purpose may be considered obvious and thus potentially unpatentable.
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A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement.
MPEP 2166 provides a form paragraph for rejecting single means claims:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
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According to MPEP 2515, anyone can pay maintenance fees for a patent. Specifically, the section states:
“The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee.“
This means that the patent owner, a legal representative, or even a third party can submit the payment. No special authorization is required for someone other than the patentee to pay the fees.
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Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
What are the requirements for citing NPL documents in an IDS?
When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):
“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”
The MPEP further clarifies:
- For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
- The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.
Additionally:
- For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
- If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.
Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.
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Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?
No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office.
(MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.
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The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
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Information Disclosure Statement (IDS) requirements for international design applications designating the United States are similar to those for domestic national applications:
- The duty to disclose information material to patentability applies to individuals associated with the filing and prosecution of the application.
- An IDS must adhere to the requirements set forth in 37 CFR 1.97, 1.98, and 1.33(b) for consideration by the examiner.
- An IDS filed within three months of the publication date of the international registration will be considered by the Office under 37 CFR 1.97(b)(5).
- IDSs filed after this period may be considered as provided in 37 CFR 1.97.
As stated in the MPEP: An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56.
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The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:
“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”
The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
Including the object of the invention in the Brief Summary is optional but permissible. According to MPEP 608.01(d), “A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description.” The MPEP further clarifies that “The brief summary should be more than a mere statement of the objects of the invention, which statement is also permissible under 37 CFR 1.73.” This means that while you can include the object of the invention, it should not be the sole content of the Brief Summary. The summary should primarily focus on describing the nature and substance of the invention itself.
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What happens if joint inventors can’t agree on filing a patent application?
If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.
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When adding a new inventor to a patent application, additional documentation is required. According to 37 CFR 1.48(b):
An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
This means that any newly added inventor must submit either an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64. The specific requirements for these documents depend on the application’s filing date. For applications filed on or after September 16, 2012, refer to MPEP § 602.01(a) for oath or declaration requirements and MPEP § 604 for substitute statement requirements.
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Yes, it is possible to file a delayed benefit claim in an abandoned application, particularly for provisional applications. The MPEP 211.04 states:
“Effective December 18, 2013, 35 U.S.C. 119(e)(1) no longer requires that the amendment containing the specific reference to the earlier filed provisional application be submitted during the pendency of the application. Therefore, a petition to revive is no longer required to add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned nonprovisional application filed on or after November 29, 2000.”
This means you can file a petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed provisional application in the abandoned nonprovisional application. This may be necessary to correct benefit claims in later-filed applications that claim benefit from the abandoned application.
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Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The assignment of a priority right can significantly impact patent applications. According to MPEP 216:
‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’
Key points about the assignment of priority rights:
- Priority rights can be transferred separately from the application itself.
- The assignment must be executed before filing the later application claiming priority.
- An assignment of the entire right, title, and interest in an application includes the right of priority.
- Partial assignments of priority rights are possible but must be clearly documented.
Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.
For more information on effective filing date, visit: effective filing date.
The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered.
The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.
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Antecedent basis in patent claims refers to the presence of support for claim terms in the specification. It is important because it ensures clarity and consistency between the claims and the specification. MPEP 608.01(o) states:
This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Proper antecedent basis helps prevent ambiguity in claim interpretation and strengthens the overall patent application. If the examiner finds that claims lack proper antecedent basis, they may object to the specification using form paragraph 7.44.
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Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
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Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
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Recording a patent assignment with the USPTO is crucial for several reasons:
- Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
- Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
- Chain of Title: It helps maintain a clear chain of title for the patent or application.
- Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.
The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.
There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
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What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
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To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:
“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]. The inventorship has been corrected as requested.”
It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:
“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”
This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.
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Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
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- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
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The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):
“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”
This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.
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The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may prevent applicant from obtaining a patent.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
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When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
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If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:
- For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
- For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)
The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”
The petition must include:
- The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
- A petition fee under 37 CFR 1.17(m)
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional
The Director may require additional information if there’s a question about whether the delay was unintentional.
For more information on 37 CFR 1.78, visit: 37 CFR 1.78.
For more information on petition fee, visit: petition fee.
For more information on unintentional delay, visit: unintentional delay.
The best mode requirement is one of the three requirements for a patent specification under 35 U.S.C. 112(a). It requires that the inventor disclose the best way of carrying out the invention that they know of at the time of filing the patent application.
The MPEP states:
“[The specification] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
It’s important to note that the best mode requirement is separate and distinct from the enablement requirement. As mentioned in the MPEP, citing In re Newton: “Best mode is a separate and distinct requirement from the enablement requirement.”
The purpose of the best mode requirement is to prevent inventors from concealing the best way of practicing their invention while still obtaining patent protection for it. This ensures that the public receives the full benefit of the invention in exchange for the patent grant.
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How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
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The timing requirements for submitting an IDS are:
- Within 3 months of filing or before first Office action, whichever is later
- Before final Office action, Notice of Allowance, or Quayle action
- After final Office action but before issue fee payment
- After issue fee payment but before patent grant
The specific requirements vary based on when the IDS is filed. For example, as stated in MPEP 609.04(b): “An information disclosure statement will be considered by the examiner if filed within any one of the following time periods: (A) for national applications (not including CPAs), within three months of the filing date of the national application or before the mailing date of a first Office action on the merits; (B) for international applications, within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 or before the mailing date of a first Office action on the merits; (C) for RCEs and CPAs, before the mailing date of a first Office action on the merits; or (D) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later.”
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Yes, an application data sheet (ADS) can be used to correct certain information in a patent application. According to MPEP 603, deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76.
For example, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76.
However, it’s important to note that not all corrections can be made with an ADS. Specifically, any correction of inventorship must be pursuant to 37 CFR 1.48.
This means that inventorship changes require a separate process and cannot be corrected solely through an ADS.
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When responding to an objection regarding unlabeled prior art figures, applicants must follow specific procedures for submitting corrected drawings. According to MPEP 608.02(g), the process involves:
- Submitting corrected drawings in compliance with 37 CFR 1.121(d).
- Labeling the replacement sheet(s) as ‘Replacement Sheet’ in the page header, as per 37 CFR 1.84(c).
- Ensuring that the labeling does not obstruct any portion of the drawing figures.
- Designating the prior art figure with a legend such as ‘Prior Art’.
The MPEP states: Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled ‘Replacement Sheet’ in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures.
It’s crucial to follow these instructions carefully to ensure that the objection is resolved and to avoid further complications in the patent prosecution process.
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Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03:
“There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references.”
However, it’s important to note that if the applicant wants these references to be printed on the face of the resulting patent, they must provide a separate listing, preferably on a PTO/SB/08 form, within the set period for reply to the Office action or within one month of the mailing date of the Notice of Allowability.
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A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ¶ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
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The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):
In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.
It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.
When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:
- A clear statement requesting the deletion of the inventor(s)
- The name(s) of the inventor(s) to be deleted
- The filing date of the CPA
The MPEP provides a template for acknowledging such requests:
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].
In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:
“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
Similarly, for domestic priority under 35 U.S.C. 120:
“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”
In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.
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‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
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When correcting inventorship after an Office action on the merits has been given or mailed in the application, there are additional requirements:
- Pay the fee set forth in 37 CFR 1.17(d) in addition to the processing fee
- This additional fee is not required if inventors are being deleted due to claim cancellation
The MPEP states: 37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
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Can a power of attorney be filed after the patent application is submitted to the USPTO?
Yes, a power of attorney can be filed after the patent application is submitted to the USPTO. The MPEP 601.02 states:
“A power of attorney may be filed in a provisional application, a nonprovisional application, a reexamination proceeding, or a supplemental examination proceeding.”
This means that you can file a power of attorney at various stages of the patent process, including:
- At the time of filing the application
- After the application has been submitted
- During prosecution of the application
- Even after the patent has been granted (for reexamination or supplemental examination proceedings)
However, it’s generally advisable to file the power of attorney as early as possible to ensure smooth communication with the USPTO throughout the application process. If you need to file a power of attorney after submission, use the appropriate USPTO form and follow the current filing procedures.
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Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:
- Make remarks of record in the new application referring to the affidavit or declaration.
- Include a copy of the original affidavit or declaration filed in the prior application.
The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.
It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
35 U.S.C. 102(a)(2) applies to certain patent documents as prior art. The MPEP states:
“U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention.”
Key points to understand:
- The reference’s effectively filed date must be before the claimed invention’s effective filing date
- The reference can be prior art even if its publication date is after the claimed invention’s effective filing date
- 35 U.S.C. 102(d) determines when subject matter in these documents was “effectively filed”
Exceptions to 102(a)(2) prior art are provided in 35 U.S.C. 102(b)(2), including disclosures of the inventor’s own work and common ownership scenarios.
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What is the difference between a general power of attorney and a limited power of attorney in patent applications?
In patent applications, there are two main types of power of attorney: general and limited. The MPEP 601.02 distinguishes between these as follows:
“A power of attorney may be in the form of a general power of attorney, e.g., to represent the client in all matters before the Office, or limited, e.g., to represent the client in a particular application or in a particular aspect of an application.”
Key differences include:
- General Power of Attorney: Grants broad authority to represent the client in all matters before the USPTO
- Limited Power of Attorney: Restricts the attorney’s authority to specific applications or aspects of an application
When deciding between the two, consider the scope of representation needed and any potential conflicts of interest. A limited power of attorney can be useful when working with multiple attorneys or when you want to maintain control over certain aspects of your patent portfolio.
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Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
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When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.
However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.
When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:
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]. The inventorship has been corrected as requested.
This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
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]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
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When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
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The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“The language ‘in this country’ in pre-AIA 35 U.S.C. 102(b) does not include other WTO or NAFTA member countries, but includes any State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
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When submitting a “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), applicants are required to pay a late furnishing fee. According to MPEP 2414.05:
“In response to such a requirement, the late furnishing fee set forth in § 1.445(a)(5) is also required.”
This fee is in addition to the submission of the “Sequence Listing XML” and a statement that the information does not go beyond the original disclosure. The specific amount of the fee can be found in 37 CFR 1.445(a)(5) and is subject to change, so applicants should consult the current fee schedule on the USPTO website.
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According to the MPEP, amino acid sequences must be set forth separately under certain conditions. Specifically:
“When the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).”
This means that if the amino acid sequence derived from the coding regions meets the minimum length requirements specified in 37 CFR 1.821(a), it must be presented as a separate sequence in the patent application, in addition to being depicted below the corresponding codons.
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To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:
- The application must be a design application.
- The prior application must be a nonprovisional application.
- The application must be filed before the earliest of:
- Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
- Abandonment of the prior application; or
- Termination of proceedings on the prior application.
As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”
For more information on continuation application, visit: continuation application.
For more information on CPA, visit: CPA.
For more information on Divisional application, visit: Divisional application.
For more information on filing requirements, visit: filing requirements.
If a patent application is in condition for allowance except for a required deposit, the USPTO may notify the applicant and set a three-month period for making the deposit. As stated in MPEP 2411.03:
“[T]he Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment.”
This period is not extendable under 37 CFR 1.136. Failure to make the deposit within this timeframe may result in abandonment of the application.
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MPEP 606 provides guidance on words that should be avoided in patent application titles:
“The words listed below are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.”
While the MPEP doesn’t provide an exhaustive list in this section, it’s generally advisable to avoid:
- Non-descriptive terms like ‘new’, ‘improved’, or ‘invention of’
- Articles such as ‘a’, ‘an’, or ‘the’ at the beginning of the title
- Overly broad terms that don’t specifically describe the invention
However, there are exceptions. For example, “The term ‘new’ will not be deleted when it is a part of a proper name, such as ‘New York’. Similarly, the term ‘design’ will not be deleted when it is a part of a term, such as ‘Design-aiding apparatus…’.”
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The requirements for providing an inventor’s name in a patent application have evolved:
- For applications filed on or after September 16, 2012: 37 CFR 1.63 requires the inventor to be identified by their legal name.
- For applications filed before September 16, 2012: The full name was required, including family name and at least one given name without abbreviation.
The MPEP clarifies: “For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name.”
If an inventor’s full given name is a singular letter or letters (e.g., “J. Doe” or “J.P. Doe”), this should be explained in the oath or declaration to avoid objections.
For name corrections or changes after filing, a request under 37 CFR 1.48(f) is required, which includes submitting an application data sheet and a processing fee.
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Can an examiner request copies of cited NPL documents not submitted with an IDS?
Yes, an examiner can request copies of cited Non-Patent Literature (NPL) documents that were not submitted with an Information Disclosure Statement (IDS) under certain circumstances:
- If the NPL citation is incomplete or illegible, the examiner may request a legible copy.
- If the NPL document is not readily available to the examiner, they may request a copy from the applicant.
- The examiner should only request copies of documents that seem particularly relevant to the claimed invention.
According to MPEP 609.05(c): “The examiner may request copies of only those documents cited in the information disclosure statement that are not present in the Office’s files if the examiner believes the documents to be readily available.”
However, it’s important to note that: “The Office should not require copies of U.S. patents and U.S. patent application publications cited in an IDS, unless required by the first sentence of 37 CFR 1.98(d).”
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The inventor’s citizenship is an important piece of information in a patent application for several reasons:
- Compliance with USPTO requirements
- Determination of inventorship rights
- Application of international treaties
- Export control considerations
MPEP 602.08(a) states: ‘Citizenship is required to support an oath or declaration under 37 CFR 1.63 or to determine whether the application is subject to a secrecy order under 37 CFR 5.1(b).’
The citizenship information helps the USPTO ensure compliance with various legal requirements and international agreements, such as the Paris Convention for the Protection of Industrial Property.
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What are the consequences of failing to submit an Information Disclosure Statement (IDS)?
Failing to submit an Information Disclosure Statement (IDS) can have serious consequences for patent applicants. According to MPEP 609:
“The failure to timely file an Information Disclosure Statement may result in the application being abandoned or may adversely affect the validity of the patent.”
Specifically:
- The application may be abandoned if the IDS is not filed within the time periods specified in 37 CFR 1.97.
- If a patent is granted, it may be invalidated if it’s later discovered that material information was intentionally withheld from the USPTO during prosecution.
- The applicant may be accused of inequitable conduct, which can render the entire patent unenforceable.
It’s crucial for applicants to diligently submit all known material information to the USPTO through proper IDS filings to avoid these potential issues.
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The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
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What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains:
“[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.”
This means that even if an invention is used secretly, if it’s being commercially exploited, it may still be considered a public use. However, the mere fact that an invention is used internally by the inventor or their company to develop future products that are never sold is not sufficient by itself to create a public use bar.
It’s important to note that “public” is not necessarily synonymous with “non-secret.” The determination of whether a use is public depends on various factors, including the nature of the activity, public access, confidentiality obligations, and commercial exploitation.
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Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
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In patent law, machines and manufactures are two distinct categories of statutory subject matter. The MPEP provides definitions for both:
Machine: “A machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This category ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’“
Manufacture: “A manufacture is ‘a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.’ … manufactures are articles that result from the process of manufacturing, i.e., they were produced ‘from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’“
The key difference is that a machine is typically a device with moving parts or circuitry that performs a function, while a manufacture is a tangible article that has been produced or modified by human intervention. Both categories require physical or tangible form.
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An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
- Formal abandonment by the applicant or their attorney/agent
- Failure to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, not filing a nonprovisional application within 12 months
Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.
For more information on patent abandonment, visit: patent abandonment.
In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04:
“‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same.”
This means that even if an application and a reference have one or more inventors in common, the reference can still be considered “by another” if the inventive entities are not identical.
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The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:
The filing date of a continuation application is the filing date of the parent application.
However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:
- The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
- For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
- Each continuation in a chain reduces the effective patent term.
It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.
For more information on continuation application, visit: continuation application.
For more information on patent priority, visit: patent priority.
For more information on patent term, visit: patent term.
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
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If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
If an applicant does not have firsthand knowledge of whether the invention involved work under any contract or arrangement with the Atomic Energy Commission or NASA, but includes such information derived from others:
- The applicant’s statement should identify the source of this information, or
- The applicant’s statement could be accompanied by a supplemental declaration or oath regarding the contractual matters, made by the assignee or another person (like an employee) who has the requisite knowledge
No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
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The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
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A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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For an Information Disclosure Statement (IDS) filed after a final Office action, Notice of Allowance, or an Ex parte Quayle action, but before or with payment of the issue fee, the following is required:
- A statement under 37 CFR 1.97(e), and
- The fee set forth in 37 CFR 1.17(p)
According to MPEP 609.04(b): An information disclosure statement will be considered by the examiner if filed on or after the mailing date of any of the following: a final action under 37 CFR 1.113; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, but before or simultaneous with payment of the issue fee, provided the statement is accompanied by: (A) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V; and (B) the fee set forth in 37 CFR 1.17(p).
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The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:
‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’
The process typically involves:
- An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
- The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
- If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.
It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.
For more information on juristic entity, visit: juristic entity.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
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What is the significance of a power of attorney in patent applications?
A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.
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Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is that a continuation application is based on a prior nonprovisional application, while a provisional application is a standalone filing that can later be used as a priority document.
The MPEP specifically notes:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application.”
This guidance also applies to continuation applications. Provisional applications serve as temporary placeholders and do not undergo examination, while continuation applications are fully examined and build upon previously filed nonprovisional applications.
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While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections:
- On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.
- Public Use: Involves the invention being used in a way that makes it accessible to the public, even if not commercially.
Key differences include:
- Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
- Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
- Purpose: ‘On sale’ focuses on commercial exploitation, while ‘public use’ is more about the invention being accessible or observable by the public.
Both ‘on sale’ and ‘public use’ can trigger statutory bars to patentability, so inventors should be cautious about any activities that might fall into either category before filing a patent application.
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Listing references in the specification instead of submitting them in a proper Information Disclosure Statement (IDS) can have significant consequences. The MPEP 609.05(a) addresses this issue with form paragraph 6.49.06:
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP § 609.04(a), subsection I. states, ‘the list may not be incorporated into the specification but must be submitted in a separate paper.’ Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
This means that references listed in the specification:
- Are not considered a proper IDS
- Will not be considered by the examiner unless cited on form PTO-892
- Must be submitted separately in a proper IDS to ensure consideration
To ensure all relevant prior art is considered, applicants should always submit references in a separate, properly formatted IDS rather than listing them in the specification.
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The AIA provides specific guidance for determining the effective filing date of claimed inventions in reissue applications:
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
This means:
- The effective filing date for a claimed invention in a reissue application is treated as if the claim was part of the original patent being reissued.
- This applies even if the claim is new or modified in the reissue application.
- The purpose is to maintain continuity with the original patent and prevent the introduction of intervening prior art solely due to the reissue process.
It’s important to note that while this provision helps determine the effective filing date, reissue applications must still comply with other statutory requirements, including those related to broadening reissues and the two-year filing deadline for broadening reissues.
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What happens if a continuation application is filed after the parent application has been abandoned?
If a continuation application is filed after the parent application has been abandoned, it may still be entitled to the benefit of the filing date of the prior application. The MPEP states:
“Where the prior application has been abandoned, the petition to revive under 37 CFR 1.137 (a) or (b) must be filed in the prior application, or in a subsequent nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior application, if the prior nonprovisional application is not pending and claims the benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) of a provisional application.”
This means that even if the parent application is abandoned, you can still file a continuation application and potentially revive the parent application. However, specific procedures must be followed, including filing a petition to revive in the appropriate application.
For more information on reviving abandoned applications, refer to MPEP 711.
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Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?
Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:
- The practitioner must submit a request to withdraw.
- The request must comply with 37 CFR 1.36.
- The USPTO must approve the withdrawal.
According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”
It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.
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No, you cannot get your patent application drawings returned. The United States Patent and Trademark Office (USPTO) clearly states in the Manual of Patent Examining Procedure (MPEP) Section 608.02(y) that:
Drawings will not be returned to the applicant.
This policy ensures that the USPTO maintains a complete record of all submitted materials for each patent application. It’s important for applicants to keep copies of all documents, including drawings, submitted to the USPTO.
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Yes, you can request the return of your model, exhibit, or specimen from the USPTO. However, there are specific procedures and timeframes to follow. According to MPEP 608.03(a):
A request for return of the model, exhibit, or specimen should be made within the period set forth in MPEP § 608.03(a).
Here are the key points to remember:
- Make the request before the application is allowed or within two months after the date of the Notice of Allowance.
- Include a proper postage paid return address sticker with the request.
- If the item is not claimed within the specified period, the USPTO may dispose of it at its discretion.
It’s important to act promptly if you wish to have your items returned, as the USPTO is not obligated to store them indefinitely.
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The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
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When a Secrecy Order case is in condition for allowance, the prosecution is closed, but the patent is not issued. According to the MPEP, When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution.
This is in accordance with 37 CFR 5.3(c). The application remains in this state until the Secrecy Order is rescinded.
For more information on notice of allowability, visit: notice of allowability.
The purpose of an abstract in a patent application is to provide a concise summary that allows readers to quickly determine the nature and gist of the technical disclosure. According to MPEP 608.01(b):
The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims.
This summary helps examiners, researchers, and other readers to quickly assess the relevance of the patent application to their interests.
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Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:
1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.
2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.
The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”
For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.
There are two main ways to obtain a receipt for items filed with the USPTO:
- For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
- For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.
The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)
Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:
- A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
- No additional amendment to the specification or application data sheet is required to claim benefit
- A CPA is considered to reference every application in the chain with the same application number
- Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA
The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).
For more information on benefit claims, visit: benefit claims.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on patent applications, visit: patent applications.
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies:
“Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”
When submitting documents as evidence, applicants don’t need to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98. However, if the same documents are also listed on an IDS form (e.g., PTO/SB/08), the applicant must comply with IDS rules for those documents to be considered as part of the IDS.
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No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
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For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:
“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”
This means that when making a benefit claim, you must explicitly state whether the current application is a:
- Continuation
- Divisional
- Continuation-in-part
of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.
Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.
For more information on divisional, visit: divisional.
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806:
- Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing.
- For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
- Include the control number assigned to the reexamination proceeding.
- Clearly mark all papers with “EX PARTE REEXAMINATION” to ensure proper routing.
The MPEP states: “Any paper filed in an ex parte reexamination proceeding resulting from a supplemental examination proceeding should be filed as provided in 37 CFR 1.1(c).” This ensures that your documents are properly processed and routed within the USPTO.
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The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
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The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
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In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
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For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
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An attorney can withdraw from representation in a patent case by following these steps:
- File a request to withdraw in accordance with 37 CFR 1.36.
- The request should include the correspondence address of the applicant or patent owner.
- If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
- The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.
As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“
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A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
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When submitting prior art with a patent protest, follow these guidelines:
- Include a copy of each prior art document relied upon.
- Provide an English language translation of any non-English language prior art.
- Highlight the relevant parts of the prior art documents.
According to MPEP 1901.03: “Copies of any prior art or other documents relied upon should be provided.” Additionally, the MPEP states: “A translation of the pertinent portions of any non-English language prior art should also be provided.” By following these guidelines, you ensure that the examiner can easily understand and consider the relevance of the submitted prior art to the patent application under protest.
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According to MPEP 2412.05(a), intentionally skipped sequences must be included in the “Sequence Listing XML” and represented as follows:
- Use the element SequenceData and its attribute sequenceIDNumber, providing the sequence identifier of the skipped sequence as the value.
- Include the elements INSDSeq_length, INSDSeq_moltype, and INSDSeq_division, but with no value provided.
- Do not include the element INSDSeq_feature-table.
- Use the element INSDSeq_sequence with the string “000” as the value.
The MPEP states: “Where no sequence is present for a sequence identifier, i.e. an intentionally skipped sequence, ‘000’ must be used in place of a sequence.” This ensures that the total number of sequences in the listing matches the total number of sequence identifiers, maintaining consistency and completeness in the documentation.
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The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:
- Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
- The revocation must be signed by the applicant or patent owner.
- If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.
According to MPEP 402.02(a): “A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c).”
It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter:
“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’”
This means that while inherent properties or characteristics of an invention can contribute to satisfying the written description requirement, they must be necessarily present and recognizable to those skilled in the art based on the original disclosure. Applicants should be cautious about relying solely on inherency and should strive to provide explicit description whenever possible.
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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When canceling a figure in a patent application, the following procedure should be followed:
- Submit a replacement sheet of drawings without the canceled figure.
- If the canceled figure was the only drawing on the sheet, provide a marked-up copy of the drawing sheet with an annotation showing the cancellation.
- Label the marked-up copy as “Annotated Sheet”.
- Present the annotated sheet in the amendment or remarks section explaining the changes.
- Amend the brief description of the drawings to reflect the change.
This procedure is outlined in MPEP 608.02(t), which states: “If a drawing figure is canceled, a replacement sheet of drawings must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only drawing on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the drawing has been cancelled is required.”
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The 30-month period for national stage entry is calculated from the priority date of the international application. The priority date is typically the filing date of the earliest application whose priority is claimed in the international application.
MPEP 601.04 states: “For most applications, the 30-month time period for entry into the national stage expires on the same day of the month as the date of the priority claim in the 30th subsequent month.” However, it’s important to note that if the 30-month period expires on a Saturday, Sunday, or federal holiday, the period is extended to the next succeeding business day.
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To correct a typographical error in a patent assignment, you need to submit several documents. According to MPEP 323.01(b), the required documents include:
- A copy of the originally recorded papers
- A cover sheet
- The required fee for each application or patent to be corrected
If the assignor is not available to make the correction, the assignee must also provide:
- An affidavit or declaration identifying the error and requesting correction
The MPEP states:
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).
Ensure all documents are properly prepared and submitted to avoid delays in processing.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
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A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
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“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
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Judicial exceptions in patent law are categories of subject matter that the courts have found to be outside the four statutory categories of invention. The MPEP defines judicial exceptions as:
“abstract ideas, laws of nature and natural phenomena (including products of nature).”
These exceptions are not patentable on their own because they are considered the “basic tools of scientific and technological work.” However, applications of these exceptions may be eligible for patent protection if they meet certain criteria, such as integrating the exception into a practical application or including additional elements that amount to significantly more than the exception itself.
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For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
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How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- Wait for account approval and receive your account number
According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.
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The requirements for power of attorney in patent applications differ based on the filing date:
- For applications filed on or after September 16, 2012: Refer to MPEP § 402.02(a) for detailed information and relevant forms.
- For applications filed before September 16, 2012: Consult MPEP § 402.02(b) for specific details and applicable forms.
The MPEP 601.02 states: “See MPEP § 402.02(a) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed on or after September 16, 2012. See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.”
This distinction is important as it affects the specific procedures and forms required for appointing a power of attorney.
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What happens if an application data sheet (ADS) is not consistent with the information provided elsewhere in the application?
If there are inconsistencies between the ADS and other documents in the application, the ADS will generally control, except for the following situations:
- The ADS is inconsistent with the oath or declaration accompanying the application, and the oath or declaration is accompanied by a statement explaining the inconsistency. In this case, the oath or declaration will control.
- The ADS is inconsistent with information provided in the specification, in which case the information in the specification will control.
As stated in MPEP 601.05(b):
“If an ADS is inconsistent with the information provided elsewhere in the application, the ADS will control except for: (1) the naming of the inventors (37 CFR 1.41(a)(1) governs), and (2) the information that is contained in an oath or declaration accompanying the application (37 CFR 1.63 and 1.67 govern).”
It’s crucial to ensure consistency across all application documents to avoid potential confusion or delays in the examination process.
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New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
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The timeframe for receiving a Notice of Allowance (PTOL-85) after a Notice of Allowability (Form PTOL-37) is generally within three months. However, if you don’t receive the Notice of Allowance within this period, it may be appropriate to make a status inquiry.
The MPEP states: A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination.
(MPEP 203.08)
However, the MPEP also notes an exception: As an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.
If you haven’t received your Notice of Allowance after three months from receiving the Notice of Allowability, it’s advisable to check the status of your application through Patent Center or contact the Application Assistance Unit.
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When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:
“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
This ensures that the examiner can consider the previously submitted evidence in the context of the new application.
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:
Any request to add an inventor must be in the form of a request under 37 CFR 1.48.
To add a new inventor:
- File a request under 37 CFR 1.48 to correct the inventorship.
- Include a statement from the new inventor agreeing to the addition.
- Pay any required fees.
- Provide an oath or declaration from the new inventor.
Failure to follow these steps may result in the inventorship remaining the same as in the prior application.
For more information on CPA, visit: CPA.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
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Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
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After a final decision in an interference proceeding, the claims are handled as follows:
- Claims that were not involved in the interference remain pending in the application.
- Claims that were involved in the interference are disposed of according to the judgment.
- Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.
As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”
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The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).
The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.
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An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
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The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:
- Visit the USPTO Patent Assignment Search page
- Enter relevant information such as patent number, assignee name, or assignor name
- Review the search results for the desired assignment information
The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’
When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
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What is the difference between a principal and an associate power of attorney in patent applications?
In patent applications, there is a distinction between principal and associate powers of attorney:
- Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
- Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.
According to MPEP 402.02(a):
“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”
It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.
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Yes, the United States Patent and Trademark Office (USPTO) provides an official form for requesting correction of inventorship in a patent application (other than a reissue application). The details are as follows:
- Form number: PTO/AIA/40
- Purpose: To request correction relating to inventorship, an inventor name, or order of names
- Availability: The form can be found on the USPTO website at www.uspto.gov/PatentForms
The MPEP states: The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names. The form is reproduced below and is also available on www.uspto.gov/PatentForms.
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Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:
According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’
This means:
- The signer must have the legal authority to act on behalf of the entity.
- For corporations, this typically includes officers or agents appointed by the board.
- For partnerships, a partner may sign.
- For universities, an authorized official may sign.
It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.
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Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:
‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:
- (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
- (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
- (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
- (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’
These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.
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Are maintenance fees required for all types of patents?
No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:
“Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents.“
Here’s a breakdown of maintenance fee requirements by patent type:
- Utility patents: Subject to maintenance fees
- Design patents: Not subject to maintenance fees
- Plant patents (filed before June 8, 1995): Not subject to maintenance fees
- Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
- Reissue patents: Subject to maintenance fees if the original patent was subject to them
It’s crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.
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The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
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A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
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For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
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When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:
‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’
This means:
- The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
- The last provided correspondence address by the inventor(s) or assignee(s) will be used.
- All future communications from the USPTO will be sent to this address.
- It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.
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If examiners find that drawings are inconsistent with the specification in a patent application, they should:
- Identify the specific inconsistencies
- Object to the drawings and/or specification as appropriate
- Provide clear explanations of the inconsistencies in the Office action
- Require the applicant to correct the inconsistencies
MPEP 608.02(e) states: ‘The examiner should see to it that the drawings are correct, complete, and consistent with the specification and claims.’ This responsibility includes ensuring that the drawings accurately reflect the invention described in the specification and that there are no contradictions between the textual description and the visual representation.
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No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:
‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’
To revoke a power of attorney:
- File a new power of attorney form (PTO/AIA/82) with the USPTO.
- The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
- Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
- Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.
It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.
For more information on power of attorney, visit: power of attorney.
For more information on pro se, visit: pro se.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
No, you do not need to submit copies of U.S. patents and patent application publications when filing an e-IDS. The MPEP 609.07 states:
Copies of U.S. patents and U.S. patent application publications cited in the IDS are not required to be submitted by the applicants with the e-IDS.
However, it’s important to note that for foreign patent documents, non-patent literature (NPLs), and unpublished U.S. patent applications not stored in the Office’s Image File Wrapper (IFW) system, you must submit PDF copies using EFS-Web.
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For patent application information not available through Public PAIR, you can submit a request to the USPTO under the Freedom of Information Act (FOIA). Here’s how to proceed:
- Submit a written request to the USPTO’s FOIA Officer.
- Clearly identify the records you’re seeking.
- Explain why you believe the information should be disclosed if it’s not typically available to the public.
- Be prepared to pay any applicable fees for search and duplication.
- Wait for the USPTO to process your request and respond, which may take several weeks.
Note that certain information may still be withheld if it falls under FOIA exemptions or is protected by other statutes.
The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.
The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:
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]. The inventorship has been corrected as requested.
In this acknowledgment:
- [1] refers to the name(s) of the inventor(s) requested to be deleted
- [2] indicates the filing date of the CPA
This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on USPTO acknowledgment, visit: USPTO acknowledgment.
The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
- Hand-delivery to the USPTO office.
Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.
As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”
Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”
If an invention appears to the USPTO Director to have significant utility in the conduct of aeronautical and space activities, the applicant must file a written statement with the USPTO Director with the patent application or within 30 days after request by the Director.
The statement must be executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any NASA contract, as provided in 51 U.S.C. 20135(d):
“No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the ‘Director’) to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.”
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
- For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.
According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.
Important considerations:
- Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
- If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
- Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
- In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.
Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.
For more information on ADS, visit: ADS.
For more information on CPA, visit: CPA.
For more information on prior art, visit: prior art.
No, extensions of time are not permitted for submitting corrected drawings in response to a notice of allowability. The MPEP clearly states:
Extensions of time to provide acceptable drawings in response to a notice of allowability are not permitted.
This strict policy ensures that the patent granting process is not unnecessarily delayed and encourages applicants to submit corrected drawings promptly after receiving the notice of allowability.
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How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
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An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
A secrecy order can remain in effect for a significant period. As stated in MPEP 120, “The secrecy order may remain in effect for the duration of the national emergency and six months thereafter and automatically expires at the end of that period.” However, it’s important to note that:
- The order can be renewed if necessary
- It can be terminated earlier if the reasons for its issuance no longer exist
- The total duration is subject to the provisions of 35 U.S.C. 181
For more information on secrecy order duration, visit: secrecy order duration.
If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
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Errors in citation numbers for U.S. patents or patent application publications in an e-IDS can be problematic because examiners rely on these numbers to retrieve and review the documents electronically. The MPEP 609.07 addresses this issue:
The only mechanism for having the correct document reviewed and considered when an erroneous U.S. patent or U.S. patent application publication is cited in an e-IDS will be by citing the correct citation number in a subsequent IDS that conforms to the requirements of 37 CFR 1.97 and 1.98.
This means that if you discover an error in a citation number after submitting an e-IDS, you must file a new IDS with the correct citation number to ensure the proper document is considered. It’s crucial to double-check all citation numbers before submitting an e-IDS to avoid such issues.
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What types of documents can be recorded as assignments with the USPTO?
The USPTO allows for the recording of various types of documents related to patent ownership. According to MPEP 302:
“The United States Patent and Trademark Office (USPTO) records assignments, grants, and similar instruments relating to interests in patents and applications as provided in 37 CFR Part 3.”
Types of documents that can be recorded include:
- Assignments: Transfers of the entire right, title, and interest in a patent or application
- Security Agreements: Documents creating a security interest in a patent or application
- Licenses: Agreements granting rights to use or practice a patented invention
- Releases: Documents releasing previous security interests or other encumbrances
- Name Changes: Documents evidencing a change in the name of the owner of record
- Mergers: Documents showing the merger of companies and the resulting transfer of patent rights
It’s important to note that the USPTO records these documents without making a determination of their validity. As stated in MPEP 302, “The recording of a document pursuant to 37 CFR 3.11 is not a determination by the USPTO of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
For more information on patent assignments, visit: patent assignments.
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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The category of abstract ideas “having no particular concrete or tangible form” is a catch-all category for abstract ideas that don’t fit neatly into the other three categories (mathematical concepts, certain methods of organizing human activity, and mental processes) as described in MPEP 2106.04(a). While the MPEP doesn’t provide an exhaustive list, it does offer some examples:
- An idea ‘of itself’: This includes ideas standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.”
- Certain arrangements of printed matter: For example, a set of dice with printed matter on the faces.
- Data recognition and storage: As exemplified in Content Extraction and Transmission LLC v. Wells Fargo Bank.
The MPEP states: “The courts have declined to define abstract ideas, other than by example, so the above-identified concepts should be understood as examples and not as a definitive or exhaustive listing.“
It’s important to note that this category is flexible and can accommodate new types of abstract ideas as they are identified by the courts. When evaluating a claim for patent eligibility, examiners are instructed to consider whether the claim recites an abstract idea, regardless of whether it fits neatly into one of the enumerated categories.
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When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
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The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:
“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”
This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.
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The In re Elsner case, as discussed in MPEP 2121.03, is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states:
“The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar.”
This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant.
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Glossaries play a crucial role in ensuring adequate definition of claim terms in patent applications. The MPEP 2173.03 specifically mentions the importance of glossaries:
“Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims.”
Glossaries serve several important functions:
- They provide clear definitions for claim terms
- They help establish antecedent basis in the specification
- They assist examiners and the public in understanding the claimed invention
- They can help prevent rejections based on indefiniteness
By including a glossary in the specification, inventors can proactively define their terms, reducing the likelihood of misinterpretation or disputes over claim scope during examination or potential litigation.
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According to MPEP 2304.01(d), finally refused or canceled claims are generally excluded from an interference proceeding. The MPEP states:
“Claims which have been finally refused or canceled are generally excluded from the interference.”
This treatment of finally refused or canceled claims serves several purposes:
- It streamlines the interference process by focusing on active, potentially patentable claims.
- It prevents the reintroduction of claims that have already been determined to be unpatentable.
- It helps maintain the efficiency and clarity of the interference proceeding.
However, it’s important to note that the word “generally” in the MPEP indicates that there might be rare exceptions to this rule, which would be determined by the administrative patent judge (APJ) based on the specific circumstances of the case.
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A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
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If a request for supplemental examination fails to comply with 37 CFR 1.610, the following process occurs:
- The Office will notify the patent owner of any defects in the request.
- The patent owner is given a non-extendable period of 30 days to correct the defects.
- If the defects are not corrected within the 30-day period, the request will not be granted a filing date and will not be entitled to a refund of the fee for reexamination.
As stated in the MPEP 2812: “If the request fails to comply with any of the requirements of 37 CFR 1.610, the patent owner will be given a single opportunity to correct the defects in the request.”
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
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A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
If a patent application fails to set forth any mode of the invention, it is considered a failure of enablement, not a best mode violation. According to MPEP 2165.02:
“The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement.”
This means that if an application doesn’t describe any way to make and use the invention, it fails the enablement requirement. The best mode requirement only comes into play when at least one mode is disclosed, but not necessarily the best one known to the inventor.
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Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
How can I correct information in an Application Data Sheet (ADS) after submission?
To correct information in an Application Data Sheet (ADS) after submission, you must follow specific procedures outlined in the MPEP:
“If an ADS has been previously submitted, the ADS provided with a continuing application, reissue application, or reexamination proceeding should be marked to show the changes from the previously submitted ADS.” (MPEP 601.05(a))
Here’s how to make corrections:
- Submit a new ADS with clearly marked changes.
- Use strikethrough for deletions and underlining for insertions.
- Include all sections of the ADS, not just those being changed.
- For inventor information changes, comply with 37 CFR 1.48.
- For benefit claims corrections, see 37 CFR 1.78.
Remember, some changes may require additional forms or fees. Always check the current USPTO guidelines for the most up-to-date requirements.
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“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
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Using a trademark as a generic term in a patent claim can have significant negative consequences:
- It may render the claim indefinite under 35 U.S.C. 112(b).
- It constitutes improper use of the trademark.
- It can potentially lead to the loss of trademark rights.
The MPEP 2173.05(u) states:
“In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”
This guidance emphasizes the importance of avoiding the use of trademarks as generic terms in patent claims to maintain both claim clarity and trademark protection.
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The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The transitional phrase “comprising” in a patent claim is inclusive and open-ended. According to the MPEP, The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
This means that a claim using “comprising” allows for the inclusion of additional elements or steps beyond those explicitly stated in the claim. For example, a claim for a device “comprising A, B, and C” would cover devices that include A, B, and C, as well as devices that include A, B, C, and additional elements.
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The main difference between 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the types of prior art they cover:
- 35 U.S.C. 102(a)(1) covers public disclosures, including patents, printed publications, public use, sales, or other public availability of the claimed invention before the effective filing date.
- 35 U.S.C. 102(a)(2) specifically covers U.S. patents, U.S. patent application publications, and international patent applications published under the Patent Cooperation Treaty, which have an effectively filed date before the effective filing date of the claimed invention.
As stated in the MPEP, “First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.” The same process is then applied for 102(a)(2) and its exceptions under 102(b)(2).
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The principle of claim differentiation is an important tool in claim interpretation. According to the MPEP:
This principle is based on the assumption that each claim in a patent has a different scope. Therefore:
- If a dependent claim includes a specific limitation, it’s presumed that the independent claim it depends from does not include that limitation.
- This presumption can be used to interpret the broader scope of the independent claim.
However, it’s important to note that this is a rebuttable presumption. The MPEP clarifies:
“This presumption is rebuttable if other evidence in the specification or prosecution history clearly indicates that the claims should be interpreted differently.”
Examiners and courts use this principle as one of several tools to understand the intended scope of patent claims.
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A Notice of Omitted Items is an official communication from the USPTO regarding missing elements in a patent application. As described in MPEP 601.01(f):
“If drawings are omitted in an application filed under 35 U.S.C. 111(a) on or after December 18, 2013, but the application contains something that can be construed as a written description, at least one drawing, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, the Office will not deny a filing date.”
In such cases, the USPTO will issue a Notice of Omitted Items, informing the applicant of the missing drawings and providing a two-month period to submit them. This notice is crucial as it sets the deadline for completing the application and avoiding abandonment.
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A substitute specification must be submitted with specific formatting requirements as outlined in 37 CFR 1.125(c):
- A clean version (without markings) must be provided.
- A marked-up copy showing all changes relative to the prior version must be submitted.
- Added text must be shown by underlining.
- Deleted text must be shown by strike-through or double brackets (for five or fewer consecutive characters).
The MPEP further states: “The paragraphs of any substitute specification, other than the claims, should be individually numbered in Arabic numerals (for example [0001]) so that any amendment to the specification may be made by replacement paragraph in accordance with 37 CFR 1.121(b)(1).”
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No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
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When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:
- If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
- If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
- If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.
The MPEP states:
In all of these situations, the most recently filed power of attorney will control.
This means that the latest power of attorney filed will take precedence over any previously filed ones.
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What is the significance of the application filing date for new matter in patent applications?
The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:
‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’
This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.
The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.
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According to the MPEP 602.06, if an inventor understands English, it is preferable to use English for oaths and declarations. The manual states:
“If the individual comprehends the English language, he or she should preferably use it.”
This preference for English, when possible, likely helps streamline the patent application process and reduces the need for translations. However, it’s important to note that the primary requirement is for the inventor to understand the language used, whether it’s English or another language.
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Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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Can drawings or figures in a patent application introduce new matter?
Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue:
‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.’
This implies that:
- Original drawings are part of the disclosure and can support claims.
- However, new or amended drawings can potentially introduce new matter.
- Changes to drawings that go beyond what was originally disclosed may be rejected as new matter.
For example, adding specific structural details to a figure that weren’t originally disclosed, or introducing new relationships between components, could be considered new matter. Applicants should be cautious when modifying drawings and ensure any changes are fully supported by the original disclosure.
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No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.
This means that the most recently filed power of attorney will control.
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According to MPEP 203.05, you have 12 months from the filing date of your provisional application to file a nonprovisional application. The MPEP states:
“in the case of a provisional application, no later than 12 months after the filing date of the provisional application”
If you don’t file a nonprovisional application within this timeframe, your provisional application will be considered abandoned. This 12-month period is set by 35 U.S.C. 111(b)(5).
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What are the requirements for submitting photographs as drawings in a patent application?
Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:
“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”
To submit photographs as drawings:
- Ensure they are the only practicable medium for illustrating the invention
- Provide high-quality photographs that clearly show all details
- Submit them on paper that complies with drawing sheet requirements
- Include any necessary mounting on bristol board or equivalent
It’s important to note that color photographs are not ordinarily permitted in utility patent applications.
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What are the signature requirements for patent practitioners in correspondence with the USPTO?
Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:
- They must personally sign correspondence using either a handwritten signature or an S-signature.
- An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
- The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).
According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
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What is the difference between new matter and new or amended claims in patent applications?
New matter and new or amended claims are distinct concepts in patent law:
- New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
- New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’
In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.
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A postcard receipt can play a crucial role in patent applications, especially when pages are allegedly missing. The MPEP 601.01(d) highlights its importance:
Applicant has produced an itemized postcard receipt which specifically lists the omitted pages as having been deposited on the missing parts’ due date.
The significance of the postcard receipt includes:
- Proof of submission: It serves as evidence that specific documents were submitted to the USPTO.
- Date verification: It can confirm the date of submission for various application components.
- Resolution of discrepancies: In cases where the USPTO claims pages are missing, the postcard can help resolve disputes.
- Petition support: It can be used to support a petition to establish the filing date of omitted pages.
Applicants are advised to use detailed, itemized postcard receipts when submitting patent applications to avoid potential issues with missing documents.
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If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:
Applicant is required to cancel the new matter in the reply to this Office action.
To respond, the applicant should:
- Review the identified new matter carefully.
- If the applicant agrees it’s new matter, cancel the objected content in their response.
- If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
- Consider amending the application to use language more closely aligned with the original disclosure.
It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).
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No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:
‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’
This restriction extends for one year after their employment at the USPTO ends.
How does a provisional application affect public disclosure of an invention?
Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’
This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:
- The confidentiality only applies to the USPTO’s handling of your application.
- If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
- The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.
Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.
For more information on provisional application, visit: provisional application.
For more information on public disclosure, visit: public disclosure.
Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:
- The application repeats a substantial portion of a prior application.
- The application adds disclosure not presented in the prior application.
- The application names the inventor or at least one joint inventor named in the prior application.
The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.
However, examiners are advised to use this determination cautiously: This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:
- Inventor’s name
- Application number (if known)
- Confirmation number (if known)
- Filing date
- Title of the invention
- Type of paper being filed
- Number of pages for each component
The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)
If a copy of an oath or declaration from a prior application is filed after the filing date of a continuation or divisional application, you should take the following steps:
- Include a cover letter with the oath or declaration.
- In the cover letter, identify the application number of the continuation or divisional application.
- Indicate in the cover letter that the submitted oath or declaration is a copy from a prior application.
- Label the copy of the oath or declaration with the application number of the continuation or divisional application.
According to MPEP 602.05: If such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file.
These steps help ensure that the oath or declaration is correctly associated with the new application and not mistakenly matched with the prior application file.
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A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):
- With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
- After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.
The MPEP ¶ 2.32 states:
Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.
If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required.
(MPEP § 211)
However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:
- For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
- For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.
For more information on petition requirements, visit: petition requirements.
If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:
“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”
This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:
- Check if the person is listed as the applicant or an assignee
- Verify if they are a registered patent practitioner
- Look for a power of attorney or authorization of agent document
- Confirm if they are named as an inventor in the application
The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):
For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.
If you’re unsure, it’s best to contact the USPTO directly for clarification.
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The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
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What are the consequences of filing an IDS after the mailing of a notice of allowance?
Filing an Information Disclosure Statement (IDS) after the mailing of a notice of allowance can have significant consequences:
- The application will be withdrawn from issue
- The IDS will be considered by the examiner
- If the examiner determines that the application is still allowable, the application may be returned to issue
- If the examiner determines that one or more claims are no longer allowable, the applicant will be notified and the claims will be rejected
As stated in MPEP 609.04(b): “If an IDS is filed after the mailing date of a Notice of Allowance under 37 CFR 1.311, the application will be withdrawn from issue.” This emphasizes the importance of timely IDS submission to avoid potential delays in patent issuance.
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The Background of the Invention section in a patent application may include two main parts:
- Field of the Invention: A statement describing the field of art to which the invention pertains. This may include a paraphrasing of applicable Cooperative Patent Classification (CPC) definitions.
- Description of the related art: Information about the state of the prior art, including references to specific prior art where appropriate. This section should also describe any problems in the prior art that the invention solves.
It’s important to note that while these components are typical, they are not strictly required. As stated in MPEP 608.01(c), “The Background of the Invention may (but is not required to) include the following parts…”
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The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335:
- The patentee, assignee, or licensee is primarily responsible for filing the notice.
- If the required notice is not filed by the designated party, any party to the arbitration proceeding may file the notice.
35 U.S.C. 294(d) states: “When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.”
This flexibility ensures that the USPTO is informed of arbitration outcomes, even if the primary responsible party fails to file the notice.
Yes, there are limitations on the types of files an opposing party can access in a contested case. According to MPEP 2307.02, access is ordinarily limited to specific categories of records:
- The application file for an involved patent
- An involved application
- An application for which a party has been accorded benefit under subpart E of 37 CFR 41
The MPEP explicitly states: “Access and copies will ordinarily only be authorized for the following records: (1) The application file for an involved patent; (2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part.”
It’s important to note that this access is distinct from public access and is specifically granted for the purposes of the contested case. Access to other types of records may be more restricted and would likely require additional justification or special authorization from the Board.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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Can an inventor’s testimony alone prove conception in a patent case?
While an inventor’s testimony is important, it is generally not sufficient on its own to prove conception in a patent case. The MPEP 2138.04 states:
“An inventor’s testimony, standing alone, is insufficient to prove conception, as some form of corroboration is required.”
This requirement for corroboration serves several purposes:
- It helps verify the accuracy of the inventor’s recollection
- It protects against fraudulent claims
- It ensures that the conception date is supported by objective evidence
Corroborating evidence can come in various forms, such as contemporaneous documents, witness testimony, or physical exhibits. The key is that there must be some independent evidence that supports the inventor’s claim of conception beyond their own statement.
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Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter:
“An inventor’s private use of the invention, for his or her own enjoyment is not a public use.”
This principle is illustrated in the case of Moleculon Research Corp. v. CBS, Inc., where the court held that an inventor showing his inventive puzzle to close friends in his dorm room and later discussing it with his company president did not result in a “public use.” The key factor was that the inventor retained control over the invention.
However, it’s important to note that if the private use involves commercial exploitation or if the invention becomes accessible to the public without restrictions, it may still be considered a public use. The determination often depends on the specific circumstances and the level of control the inventor maintains over the invention.
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How does access to files under 37 CFR 41.109 differ from public access under 37 CFR 1.11 and 1.14?
Access to files under 37 CFR 41.109 is distinct from public access under 37 CFR 1.11 and 1.14. The key differences are:
- 37 CFR 41.109 specifically applies to opposing parties in contested cases.
- It allows access to involved patents, applications, and accorded benefit applications.
- This access is independent of public availability under 37 CFR 1.11 and 1.14.
As stated in MPEP 2307.02: “The availability of a file to an opposing party under 37 CFR 41.109 has no bearing on whether a file is otherwise available under 37 CFR 1.11 or 1.14.” This means that even if a file is not publicly available, it may still be accessible to an opposing party in a contested case under 37 CFR 41.109.
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How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
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In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.”
The court upheld an obviousness rejection, stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” This case reinforces the principle that the material worked upon (in this case, adhesive tape) does not necessarily impart patentability to an apparatus claim if it doesn’t result in a structural difference.
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The element in a Sequence Listing XML serves a specific purpose in identifying the type of molecule being described. Here’s how it functions:
- It specifies whether the sequence is DNA, RNA, or protein.
- This information is crucial for proper interpretation of the sequence data.
- It helps in determining the appropriate analysis methods and tools to be used.
The MPEP 2413.01 mentions the as one of the elements within the container. By clearly indicating the molecule type, this element ensures that patent examiners and other readers can correctly understand and evaluate the sequence information provided in the application.
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The element in a Sequence Listing XML is used to describe features of the sequence. Here’s how it’s structured and used:
- It contains one or more elements.
- Each element describes a specific feature of the sequence.
- Features can include biological significance, such as coding regions or mutation sites.
The MPEP 2413.01 states: “The contains one or more elements.” This table allows applicants to provide detailed information about specific regions or characteristics of the sequence, which is crucial for understanding its biological function and patentability.
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The MPEP 2106.04(d)(2) provides examples of claims that do not integrate a judicial exception through treatment. These include:
- Insignificant extra-solution activity: “For example, a claim reciting the step of ‘administering a drug providing 6-thioguanine to a patient’ (without more) is not a meaningful limitation.”
- General treatment: “For example, consider a claim that recites mentally analyzing information to identify if a patient has a genotype associated with poor metabolism of beta blocker medications and then ‘administering a lower than normal dosage of a beta blocker medication to a patient identified as having the poor metabolizer genotype.’”
- Field of use limitations: “For instance, a claim that recites ‘administering a suitable medication to a patient’ is not a meaningful limitation because it does not specify what the medication is or how it is administered.”
These examples illustrate that treatments that are too general, lack specificity, or are merely incidental to the core of the invention may not be sufficient to integrate a judicial exception into a practical application.
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What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
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The phrase “The Invention Was Made in This Country” refers to a specific requirement in pre-AIA (pre-America Invents Act) U.S. patent law. According to MPEP 2138.02, this requirement is related to prior art under pre-AIA 35 U.S.C. 102(g).
The MPEP states: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.” This means that for an invention to be considered prior art under this section, it must have been made within the United States.
It’s important to note that this requirement has limited applicability to applications subject to the first inventor to file (FITF) provisions of the AIA. For current applications, refer to MPEP § 2159 et seq. to determine if this rule applies.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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The element in a Sequence Listing XML contains crucial information about the actual sequence. Here’s what it includes:
- The raw sequence data itself.
- It represents the order of nucleotides (for DNA/RNA) or amino acids (for proteins).
- The sequence is presented without spaces or numbers.
According to MPEP 2413.01, “The contains the raw sequence data.” This element is essential as it provides the core information about the biological sequence being disclosed in the patent application.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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The element in a Sequence Listing XML serves a specific purpose:
- It is used to provide additional sequence identifiers for a given sequence.
- This element can contain one or more sub-elements.
- Each sub-element represents an alternative identifier for the sequence.
According to MPEP 2413.01, “The contains one or more elements identifying alternative sequences.” This allows for flexibility in referencing sequences using different identification systems or nomenclatures.
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What is the significance of In re Leshin in MPEP 2144.07?
The case In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) is cited in MPEP 2144.07 as an important precedent. The section states:
“Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, was held to be nonpatentable.”
This case reinforces the principle that selecting a known material based on its suitability for an intended use is generally not patentable. It demonstrates that even when an inventor chooses a specific type of plastic for a container, if that plastic was known and suitable for such use before the invention, the selection alone is not enough to establish patentability. This case helps patent examiners and practitioners understand how to apply the concept of “art recognized suitability” in evaluating the obviousness of material choices in inventions.
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The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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According to MPEP 2308.01, there are multiple types of judgments in an interference that can lead to the final disposal of claims. The section states: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This means that the following types of judgments can result in final disposal:
- Priority judgments: Determining which party was the first to invent
- Patentability judgments: Deciding if the claim meets the requirements for patentability
- Other adverse judgments: Any other judgment that goes against the claim in question
Each of these judgments, when rendered against a claim, results in the final disposal of that claim, preventing further prosecution in its current form.
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Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
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Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
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According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
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How does public accessibility affect the status of a printed publication in patent law?
Public accessibility is a crucial factor in determining whether a document qualifies as a printed publication under patent law. According to MPEP 2152.02(b):
“The public accessibility of the material is the key inquiry in determining whether a reference qualifies as a ‘printed publication’ bar under 35 U.S.C. 102(a)(1).”
This means that:
- The material must be accessible to the public or to persons interested and ordinarily skilled in the subject matter.
- There must be no reasonable expectation of secrecy.
- The date of public accessibility is considered the publication date.
For example, a thesis in a university library or a paper presented at a conference may be considered publicly accessible if it’s available to those interested in the field without restriction.
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No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
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The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
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According to MPEP 2307.02, any request for access to or copies of Office records directly related to a contested case must adhere to the following requirements:
- The request must be filed with the Board.
- It must precisely identify the records being requested.
- For copies, the appropriate fee set under 37 CFR 1.19(b) must be included.
As stated in the MPEP: “Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.”
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The procedure for seeking relief from prescribed time limits in international design applications is outlined in 37 CFR 1.1051. This procedure allows applicants to excuse unintentional delays in meeting time limits under the Hague Agreement for requirements related to international design applications.
The key components of this procedure include:
- Filing a petition with the USPTO
- Providing necessary documentation
- Paying required fees
- Submitting a statement of unintentional delay
- Filing a terminal disclaimer in certain cases
As stated in the MPEP: “Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional.“
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Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
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An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:
“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”
This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.
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Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP:
- Show that the Office erred in its factual findings
- Provide evidence to demonstrate nonobviousness
- Present arguments pointing out specific distinctions that render the claims patentable
- Submit rebuttal evidence, including evidence of secondary considerations
The MPEP states: “37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action.”
Applicants should provide a reasoned statement explaining why they believe the Office has erred in its factual findings or legal conclusions. Mere statements that the Office has not established a prima facie case of obviousness without substantive arguments are generally not considered adequate to rebut the rejection.
When presenting rebuttal evidence, applicants should explain how the evidence demonstrates nonobviousness, such as unexpected results or long-felt but unsolved needs.
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If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:
- For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
- For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS
This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:
The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.
It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.
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The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.
However, this is subject to specific conditions, such as common assignee, applicant, or inventor.
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37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:
- It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
- The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The prior-filed application must contain the certified copy and be identified as such.
- This provision can simplify the process of perfecting priority claims in related applications.
The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.
A preamble is considered limiting when it gives life, meaning, and vitality to the claim or if it recites essential structure or steps. According to MPEP 2111.02:
“If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”
This principle is illustrated in cases like Pitney Bowes, Inc. v. Hewlett-Packard Co. and Jansen v. Rexall Sundown, Inc., where the courts found the preambles to be limiting because they gave essential meaning to the claims.
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How does the AIA define “public use” for patent purposes?
The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c):
“Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date of the claimed invention.”
The MPEP further clarifies that public use under the AIA is defined as any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public. This definition emphasizes the accessibility of the invention to the public, rather than the inventor’s control over the invention or their intent to keep it secret.
It’s important to note that the AIA’s definition of public use is broader than under pre-AIA law, as it includes uses that may not have been visible or known to the public, as long as the use was not actively kept secret.
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The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
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If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):
- First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
- If unsuccessful, submit the following to the Assignment Services Division:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration:
- Identifying yourself as the correct owner
- Stating that the previously recorded document contained erroneous information
- Providing the reel and frame number of the incorrectly recorded document
- The required fee for each application or patent to be corrected
The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.
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A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.
The chain of title includes:
- Original patent assignment
- Subsequent transfers of ownership
- Business name changes
- Mergers and acquisitions
- Any other events affecting patent ownership
Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
If an applicant’s Information Disclosure Statement (IDS) is not considered due to noncompliance, they have options to address the issue. According to MPEP 609.05(a):
Applicant may then file a new information disclosure statement or correct the deficiency in the previously filed IDS, but the date that the new IDS or correction is filed will be the date of the IDS for purposes of determining compliance with the requirements based on the time of filing of the IDS (37 CFR 1.97).
This means the applicant can either:
- File a new, compliant IDS
- Correct the deficiencies in the previously filed IDS
It’s important to note that the date of the new or corrected IDS will be considered the filing date for compliance purposes. Applicants should ensure they address the specific issues mentioned in the examiner’s notification to avoid further delays.
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Treatment or prophylaxis limitations are a specific type of meaningful limitation that can render a claim patent-eligible. These limitations are particularly relevant in medical and biotechnology fields.
MPEP 2106.05(e) notes:
“With respect to treatment or prophylaxis limitations, such as the immunization step in Classen, examiners should note that the other meaningful limitations consideration overlaps with the particular treatment or prophylaxis consideration that is evaluated in Step 2A Prong Two (see MPEP § 2106.04(d)(2)).”
This overlap means that treatment or prophylaxis steps can serve as both meaningful limitations and evidence of integration into a practical application. These limitations are often concrete, specific actions that apply the judicial exception in a meaningful way, transforming abstract ideas or natural phenomena into patent-eligible subject matter.
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The relationship between the specification and claims in a patent application is crucial. As indicated in MPEP 608.01(k), “35 U.S.C. 112 requires that the specification shall particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as his or her invention.”
This means:
- The specification provides a detailed description of the invention
- The claims, which are part of the specification, define the legal scope of protection
- The claims must be supported by the description in the specification
- The specification should enable a person skilled in the art to make and use the invention as claimed
In essence, the specification provides the context and detailed explanation of the invention, while the claims define the specific elements for which legal protection is sought.
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What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
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Can a priority claim be corrected after the patent has been issued?
Yes, it is possible to correct a priority claim after a patent has been issued, but the process is more complex and limited compared to correcting a priority claim in a pending application.
According to MPEP 214.02: ‘For a correction of foreign priority claim after issuance of a patent, see MPEP § 216.01.’
To correct a priority claim in an issued patent, the following steps are typically required:
- File a petition for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Pay the required fee.
- Provide a statement that the error occurred without deceptive intent.
- Submit evidence to support the correction, such as a certified copy of the priority document.
It’s important to note that the scope for correcting priority claims in issued patents is more limited than in pending applications. The correction must not involve a change that would broaden the scope of the claims of the issued patent.
For more detailed information on correcting foreign priority claims after patent issuance, refer to MPEP § 216.01.
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To correct a typographical error in a recorded assignment document, you have two main options:
- Create and record a new document
- Make corrections to the original document and re-record it
According to MPEP 323.01(b):
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
This means that the assignor (the party transferring the rights) is typically responsible for correcting such errors.
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Yes, there are additional fees for submitting large Sequence Listing files to the USPTO. The fee structure is as follows:
- Sequence Listing ASCII plain text files of 300 MB or more are subject to a fee under 37 CFR 1.21(o).
- The fee is divided into two tiers:
- Tier 1: File sizes 300 MB to 800 MB
- Tier 2: File sizes greater than 800 MB
- The fee is due upon the first submission of a Sequence Listing that meets the size criteria.
- If a larger file is submitted later, the difference in fees must be paid.
The MPEP states: Any “Sequence Listing” ASCII plain text file of 300 MB or more is subject to a fee under 37 CFR 1.21(o) to manage handling of the oversized submission (37 CFR 1.52(f)(3)). Pricing for this fee is divided into two tiers with Tier 1 for file sizes 300 MB to 800 MB and Tier 2 for file sizes greater than 800 MB.
It’s important to note that these fees are designed to encourage applicants to include only essential sequence data in their Sequence Listings, thereby reducing strain on USPTO resources.
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The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways:
- “No cause” extensions for up to two months are not available.
- All requests must be filed on or before the day on which action by the patent owner is due.
- All requests must include a showing of sufficient cause and be for a reasonable time.
- The mere filing of a request does not automatically effect an extension.
- First requests are generally granted for one month if sufficient cause is shown.
- Second or subsequent requests are only granted in extraordinary situations.
The MPEP states: “The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT).“
This difference is due to third-party requested reexaminations being considered “inter partes proceedings” under the Patent Law Treaty, while patent owner requested and Director ordered reexaminations are not.
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35 U.S.C. 112(f) (formerly 35 U.S.C. 112, sixth paragraph) has a specific relationship to the doctrine of equivalents. MPEP 2186 explains:
“35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permit means- (or step-) plus-function limitations in claims to combinations, ‘with the proviso that application of the broad literal language of such claims must be limited to only those means that are ‘equivalent’ to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.’”
In essence, 35 U.S.C. 112(f) applies the doctrine of equivalents in a restrictive manner to means-plus-function claim limitations, limiting their scope to equivalents of the structures disclosed in the specification.
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The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662:
The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).
Key points to remember:
- The standard appeal period is two months from the date of the Board decision.
- If a request for rehearing is filed, the two-month period starts from the final Board action on that request.
- The appeal must be made to the U.S. Court of Appeals for the Federal Circuit.
It’s crucial to adhere to these deadlines, as failing to file a timely notice of appeal may result in the loss of appeal rights. Parties should also be aware of the procedures for requesting a rehearing, as this can affect the timeline for appealing to the Federal Circuit.
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The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
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When writing your patent application abstract, it’s important to avoid several common mistakes. The MPEP 608.01(b) provides guidance on what to avoid:
The abstract should avoid using phrases which can be implied, such as, ‘The disclosure concerns,’ ‘The disclosure defined by this invention,’ ‘The disclosure describes,’ etc.
Common mistakes to avoid include:
- Using legal phraseology or claims language
- Exceeding the 150-word limit
- Including speculative applications or purported merits of the invention
- Comparing the invention to prior art
- Using implied phrases like ‘This invention relates to…’
- Including extraneous information not crucial to understanding the invention
- Writing in a promotional or biased manner
By avoiding these mistakes, you can create a clear, concise, and effective abstract that accurately represents your invention.
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No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.
According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.
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If you’ve filed a patent application without necessary drawings, you have a limited time to submit them. According to MPEP 601.01(f):
“The applicant is given a time period of 2 months from the date of the notification to submit the omitted drawings and avoid abandonment of the application.”
This two-month period is set when the USPTO issues a Notice of Omitted Items. It’s crucial to respond within this timeframe to prevent your application from being abandoned. If you need more time, you can request an extension, but fees may apply.
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According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:
- A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
- All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.
The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
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The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
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Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure.
The MPEP provides an example: New matter includes not only the addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method.
(MPEP 608.04(a))
This concept is particularly important in the context of:
- Changing the scope of the invention
- Altering the nature of the invention
- Removing essential features or steps
Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.
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Yes, you must assert small entity status separately for each related application. Specifically:
- Status must be established in each related, continuing, and reissue application
- Small entity status in one application does not affect the status of any other application or patent
- A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications
According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”
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The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):
“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”
This means that:
- For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
- For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.
These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.
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In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
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How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
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The formatting of your patent application abstract should follow specific guidelines. According to MPEP 608.01(b):
The sheet or sheets presenting the abstract may not include other parts of the application or other material.
Key formatting points include:
- Start the abstract on a separate sheet
- Use a single paragraph
- Avoid referring to purported merits or speculative applications
- Do not compare the invention with the prior art
- Preferably limit to 150 words
- If using reference characters from the drawings, place them in parentheses
Proper formatting ensures that your abstract is clear, concise, and easy for examiners and other readers to quickly understand.
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What are the income limitations for qualifying as a micro entity?
To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:
“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))
For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.
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According to 37 CFR 1.72(b), the requirements for an abstract in a patent application are:
- It must commence on a separate sheet, preferably following the claims.
- It should be under the heading ‘Abstract’ or ‘Abstract of the Disclosure’.
- The sheet presenting the abstract should not include other parts of the application.
- It should be concise, preferably not exceeding 150 words in length.
- It should enable quick determination of the nature and gist of the technical disclosure.
The USPTO states: The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
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When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
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If a patent application is missing an abstract, the following actions will be taken:
- For applications filed under 35 U.S.C. 111(a), the Office of Patent Application Processing (OPAP) will review for compliance and require an abstract if one has not been filed.
- For all other applications lacking an abstract, the examiner will require the submission of an abstract in the first Office action.
The MPEP states: The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.
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When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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The recommended length for a patent application abstract is typically 150 words or less. According to MPEP 608.01(b):
The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims.
While 150 words is the preferred maximum length, the MPEP also notes that the abstract should be as concise as the disclosure permits. This means that if the invention can be adequately summarized in fewer words, a shorter abstract is acceptable and even encouraged.
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If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):
If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.
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For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see 37 CFR 1.53(d)(4)).”
This meant that for continued prosecution design applications, a statement requesting the deletion of non-inventors had to be submitted along with the filing request when there were changes in inventorship.
To learn more:
- continued prosecution design application
- inventorship changes
- 37 CFR 1.53(d)
- continuation application
- divisional application
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If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
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New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
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No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:
A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.
The USPTO takes the following steps to ensure compliance:
- Correspondence will be sent to the applicant or assignee at their address of record.
- If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
- Examiners are instructed not to hold interviews with suspended or excluded practitioners.
For more information on USPTO correspondence, visit: USPTO correspondence.
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:
- The Office will not correspond with both an applicant and their attorney/agent.
- The Office will not correspond with more than one attorney/agent.
- If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.
According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”
Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”
To access USPTO public information facilities:
- A valid Public User or Visitor’s badge is required
- Badges can be obtained from the Office of Security next to the Public Search Facility
- An On-line Service Card is required for access to all Public Search Facilities and on-line systems
MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
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Can a withdrawn attorney continue to receive Office communications for a patent application?
No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:
“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”
This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.
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The interpretation of “equivalents” in means-plus-function claims can vary depending on how the element is described in the supporting specification. According to MPEP 2184:
“Generally, an ‘equivalent’ is interpreted as embracing more than the specific elements described in the specification for performing the specified function, but less than any element that performs the function specified in the claim.”
The scope of equivalents can range from broad to narrow:
- If the disclosure is broad, it may encompass any structure, material, or act that performs the claimed function.
- If the specification describes the invention only in the context of a specific structure, material, or act, the scope of equivalents may be constricted to virtually only the disclosed embodiments.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states:
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
This case reinforces the principle that the inclusion of the material or article worked upon by an apparatus does not automatically confer patentability. Patent examiners and practitioners should focus on the structural elements of the claimed apparatus rather than the output it produces.
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The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
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How does the In re Fisher case relate to the predictability of art and enablement?
The In re Fisher case is significant in understanding the relationship between the predictability of art and enablement. According to MPEP 2164.03:
“In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) states: ‘The scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.’”
This case established that:
- The breadth of claims must be reasonably correlated to the scope of enablement in the specification.
- In unpredictable arts, broad claims may not be enabled by a limited disclosure.
- The more unpredictable the art, the more specific enablement is necessary.
This principle guides patent examiners and applicants in assessing whether a specification provides sufficient enablement, especially in less predictable fields like biotechnology and chemistry.
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The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:
“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”
This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.
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The MPEP provides several examples of claims that do not recite abstract ideas:
- A method for calculating an absolute position of a GPS receiver
- A method for detecting suspicious activity using network monitors and analyzing network packets
- A specific data encryption method for computer communication
- A method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask
The MPEP explains: “These claims are not directed to an abstract idea because they do not recite an abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea.“
These examples illustrate that claims involving complex technological processes or specific improvements to computer functionality are less likely to be considered abstract ideas.
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The MPEP 2106.05(h) provides several examples of limitations that courts have described as merely indicating a field of use or technological environment. Here are some key examples:
- Limiting drug administration to patients with a specific disorder (Mayo Collaborative Servs. v. Prometheus Labs. Inc.)
- Identifying participants in a hedging process as commodity providers and consumers (Bilski v. Kappos)
- Limiting the use of a mathematical formula to determining the circumference of a wheel (Parker v. Flook)
- Specifying that audit log data relates to transactions executed in a computer environment (FairWarning v. Iatric Sys.)
- Limiting virus screening to a telephone network or the Internet (Intellectual Ventures I v. Symantec Corp.)
- Limiting the collection and analysis of data to the electric power grid (Electric Power Group, LLC v. Alstom S.A.)
- Specifying that a budgeting abstract idea is implemented using a “communication medium” including the Internet and telephone networks (Intellectual Ventures I v. Capital One Bank)
These examples demonstrate that merely limiting an abstract idea or judicial exception to a particular field or technological environment is not sufficient to make a claim patent-eligible.
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When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “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).”
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What are the requirements for INSDSeq_length in a Sequence Listing XML?
According to MPEP 2413, the INSDSeq_length element in a Sequence Listing XML has specific requirements:
- It must be a positive integer
- It represents the number of residues in the sequence
- For nucleotide sequences, it includes both nucleotides and nucleotide analogs
- For amino acid sequences, it includes amino acids, modified amino acids, and unknown amino acids
MPEP 2413 states: “The length of the sequence must be indicated by a positive integer expressing the number of residues.”
This element is crucial for accurately representing the size of each sequence in the Sequence Listing XML file.
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For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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Yes, applicants need to specify the term of deposit even if it’s made under the Budapest Treaty. The MPEP clearly states:
Unless applicant indicates that the deposit has been made under the Budapest Treaty, applicant must indicate the term for which the deposit has been made.
This means that if the deposit is not explicitly stated to be under the Budapest Treaty, the applicant must provide information about the term of deposit. Even for Budapest Treaty deposits, it’s advisable to clearly state the term to avoid any potential issues or misunderstandings during the examination process.
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The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
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When submitting a “Sequence Listing XML” on read-only optical discs, proper labeling and packaging are crucial. According to MPEP 2413.03, follow these guidelines:
- Marking: All read-only optical discs, fees, and accompanying papers should be marked “Mail Stop SEQUENCE.”
- Hand delivery: For hand delivery to the Customer Service Window, place the disc in a protective mailer labeled with at least the application number (if available).
- Labeling requirements: Adhere to the labeling requirements of 37 CFR 1.52(e) and 1.834(b)(2).
- Packaging: Use staples and clips carefully to attach the mailer to the submitted papers without contacting or compressing the media.
- Multiple discs: If a compressed XML file doesn’t fit on a single disc, it may be split into multiple parts, labeled in compliance with § 1.52(e)(5)(vi).
The MPEP also states: “In no situations should additional or complimentary electronic copies be delivered to examiners or other Office personnel.”
By following these guidelines, you ensure proper handling and processing of your “Sequence Listing XML” submission.
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No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states:
“Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.”
However, it’s important to note that while public knowledge may not constitute public use under 102(b), it could potentially provide grounds for rejection under other sections of the patent law, such as pre-AIA 35 U.S.C. 102(a).
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An invention is considered “ready for patenting” in the context of public use when it has been reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that are sufficiently specific to enable a person skilled in the art to practice the invention. This concept is crucial in determining whether a public use or sale has occurred before the critical date. According to MPEP 2133.03(c):
“The on-sale bar of 35 U.S.C. 102(b) may apply even though the invention is not ready for use in a commercially marketable form.”
The MPEP further clarifies that an invention can be “ready for patenting” when:
- The invention is reduced to practice; or
- The inventor had prepared drawings or other descriptions of the invention sufficient to enable a person of ordinary skill in the art to practice the invention.
It’s important for inventors to be aware that even if an invention is not fully perfected, it may still be considered “ready for patenting” if it meets these criteria.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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No, the USPTO cannot record a non-English assignment document without an accompanying English translation. MPEP 302.02 clearly states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This policy ensures that all recorded documents are accessible and understandable to USPTO examiners and the public. Attempting to record a non-English document without a translation will result in the document being rejected for recordation.
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The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
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The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent:
- Multiple ex parte reexamination proceedings are generally merged into a single proceeding.
- If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations.
- The USPTO may suspend one proceeding in favor of another to promote efficiency.
The MPEP states: “If multiple ex parte reexamination proceedings are pending concurrently on a patent, the proceedings will generally be merged. If a reissue application is pending concurrently with a reexamination proceeding, the USPTO will usually merge the two proceedings.”
This approach ensures a coordinated examination and helps prevent conflicting outcomes.
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What are the requirements for proper dependency in multiple dependent claims?
Multiple dependent claims must meet specific requirements for proper dependency:
- They must refer back to previous claims in the alternative only.
- A multiple dependent claim cannot serve as a basis for any other multiple dependent claim.
- They must be written in a form that includes all limitations of each of the claims to which it refers.
The MPEP 608.01(n) states:
“A multiple dependent claim may refer in the alternative to only one set of claims. A claim such as ‘A machine according to claims 3 or 4, further comprising —‘ is improper.”
This means that a multiple dependent claim must clearly specify the alternative dependencies and cannot mix single and multiple dependencies in the same claim.
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Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
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To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:
- The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
- The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.
As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“
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While joint inventors don’t need to work together physically or simultaneously, there must be some level of collaboration or connection. The MPEP cites the case Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., which states:
“For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.”
This indicates that complete isolation or unawareness of each other’s work is not sufficient for joint inventorship. Some form of collaborative effort or shared knowledge is necessary.
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There are two primary methods to check the maintenance fee payment status of a patent:
- Online: Visit the USPTO’s Maintenance Fee webpage. Enter the patent number and corresponding application number in the appropriate fields.
- By Phone: Call the USPTO’s Maintenance Fee Branch. Note that telephone status requests are limited to two patent numbers per call.
As stated in the MPEP: “Maintenance fee status information for a patent of interest can be obtained over the internet by entering the patent number and the corresponding application number in the appropriate spaces on the webpage available at https://fees.uspto.gov/MaintenanceFees.”
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The brief description of drawings for a patent application should include:
- A reference to each figure by number (e.g., Figure 1, Figure 2)
- A brief explanation of what each figure depicts
According to MPEP 608.01(f): The specification must contain or be amended to contain a brief description of the several views of the drawings.
It’s important to note that this section should be concise and not include detailed descriptions of the drawings, which belong in the Detailed Description section.
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Pre-AIA 35 U.S.C. 102(g) is a provision in U.S. patent law that was relevant before the America Invents Act (AIA) came into effect. According to MPEP 2138.02:
“Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.”
This section of the law was significant because it:
- Defined what could be considered prior art based on earlier invention
- Was limited to inventions made in the United States
- Was used in determining priority in interference proceedings
The MPEP further clarifies: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.”
It’s important to note that while this section still applies to some older patent applications, its relevance has diminished with the implementation of the AIA, which shifted the U.S. to a first-inventor-to-file system.
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What are the consequences of filing an incomplete application?
Filing an incomplete application can have serious consequences:
- No filing date: An incomplete application may not be assigned a filing date. As stated in MPEP 601.01, “The filing date of an application for patent is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 35 U.S.C. 112(a) and at least one claim pursuant to 35 U.S.C. 112(b), and any drawing required by 35 U.S.C. 113 are filed in the Patent and Trademark Office.”
- Loss of priority: Without a filing date, you may lose priority rights or the ability to claim the benefit of an earlier filing date.
- Potential abandonment: If the missing parts are not submitted within the required time frame, the application may be considered abandoned.
- Additional fees: Late submission of required elements may incur additional fees.
It’s crucial to ensure all required elements are included when filing a patent application to avoid these potential issues.
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While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p):
- A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as it’s clear that the claim is directed to the product and not the process.
- However, a single claim that claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).
The key is to ensure that the claim is clearly directed to either the product or the process, avoiding ambiguity that could lead to indefiniteness.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
To check the maintenance fee payment status for a specific patent, you can use the following methods:
- Visit the USPTO’s Patent Maintenance Fees Storefront and enter the patent number.
- Use the Patent Application Information Retrieval (PAIR) system to access detailed maintenance fee information.
- Contact the USPTO’s Office of Finance directly at 571-272-6500.
According to MPEP 2570, “The Office will respond to requests for the maintenance fee status of patents. The Office will provide the status including the amount of any maintenance fee paid, the date paid, and any expiration date.”
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The MPEP highlights a key difference between U.S. patent law and that of other countries regarding inventorship:
“The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries.” MPEP 2109
This means that in the U.S., the actual inventors must be named on the patent application, whereas in some other countries, the applicant (who may be a company or assignee) can be named instead of or in addition to the inventors. This difference can lead to confusion for foreign applicants filing in the U.S.
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While the AIA’s “on sale” provision is largely interpreted similarly to pre-AIA law, there are some key differences. The MPEP highlights two main distinctions:
- Geographic limitations: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.” This contrasts with pre-AIA law, which limited “on sale” activities to those occurring “in this country.”
- Exceptions: “[C]ertain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor) that precede the effective filing date by less than one year.”
These differences can significantly impact how “on sale” activities are evaluated in patent applications under AIA compared to pre-AIA law.
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What constitutes a “composition of matter” in patent law?
A “composition of matter” is one of the four categories of statutory subject matter in patent law. The MPEP 2106.03 defines it as follows:
“A composition of matter is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.“
This definition is derived from the Supreme Court’s interpretation in Diamond v. Chakrabarty, 447 U.S. 303 (1980). Compositions of matter can include chemical compounds, mixtures, or other combinations of materials. This category is particularly relevant in fields such as chemistry, pharmaceuticals, and materials science.
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“Unintentional delay” in paying maintenance fees is a crucial concept for reinstating expired patents. According to MPEP 2590:
“A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee.”
This means that the entire period of delay, from the missed payment deadline to the filing of the petition, must be unintentional. Intentional delays, even after discovering the missed payment, can disqualify a patent from reinstatement.
For delays exceeding two years, the USPTO requires additional explanation to establish that the entire delay was unintentional.
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Non-compliance with Sequence Listing requirements can have significant consequences for patent applications. According to MPEP 2427, consequences may include:
- Delayed examination of the application
- Issuance of a notice of non-compliant amendment
- Requirement to submit a compliant Sequence Listing and associated documentation
- Potential loss of filing date if the non-compliance is not corrected in a timely manner
The USPTO uses various form paragraphs (e.g., ¶ 24.01 – ¶ 24.17) to notify applicants of specific deficiencies and required responses. For example, form paragraph ¶ 24.02 states: “This application fails to comply with the requirements of 37 CFR 1.821 – 1.825 because it does not contain a ‘Sequence Listing’ as a separate part of the disclosure or a CRF of the ‘Sequence Listing’.”
Applicants must address these issues promptly to avoid potential delays or other negative impacts on their patent applications.
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While both exceptions relate to prior public disclosures by inventors, there are key differences:
- AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
- AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).
The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.
However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).
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The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113:
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
This case established that the focus of examination for product-by-process claims should be on the product itself, not the process of making it. However, if the process imparts distinctive structural characteristics to the final product, those characteristics should be considered in determining patentability.
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The submission of biological material specimens to the USPTO is governed by specific requirements outlined in MPEP 608.03(a). The key points are:
- Proper packaging: Specimens must be submitted in containers that ensure their safe delivery.
- Identification: Each specimen should be clearly identified with the inventor’s name, the application number, and the filing date.
- Compliance with regulations: Submissions must comply with all applicable regulations, including those related to dangerous materials and biotechnology inventions.
The MPEP specifically states:
‘Biological specimens will not be returned to the applicant. The procedures for submittal of samples of biological materials for deposit in a suitable depository for patent purposes are governed by 37 CFR 1.801 – 1.809.’
It’s crucial for applicants to follow these guidelines to ensure proper handling and consideration of their biological material specimens during the patent examination process.
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The “effectively filed” date is crucial for determining whether a reference qualifies as prior art under 35 U.S.C. 102(a)(2). The MPEP explains:
“Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was ‘effectively filed’ before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim.”
Key points about the “effectively filed” date:
- It’s determined by 35 U.S.C. 102(d) for U.S. patents, U.S. patent application publications, and WIPO published applications
- It can be earlier than the actual filing date of the application
- It allows unpublished patent applications to potentially serve as prior art
- It’s crucial for determining the scope of prior art in the first-inventor-to-file system
Understanding the “effectively filed” date is essential for both patent examiners and applicants in assessing the relevance of potential prior art references.
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The MPEP 2210 provides guidance on how a third party can anonymously request ex parte reexamination:
“If a third party requester desires anonymity, the request for ex parte reexamination can be filed by an attorney or agent representing the third party requester. The attorney or agent should not be the attorney or agent of record in the patent file.”
The MPEP further clarifies:
- The request must be signed by the attorney or agent
- The attorney or agent may not use the “certificate of service” portion of the reexamination request
- Any correspondence address provided should be that of the attorney or agent
This approach allows the third party to maintain anonymity while still initiating the reexamination process.
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The signature requirements for a petition for delayed payment of maintenance fees depend on when the application was filed, as outlined in MPEP 2590:
For applications filed on or after September 16, 2012:
According to 37 CFR 1.33(b), the petition must be signed by:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under 37 CFR 1.34
- The applicant (37 CFR 1.42)
For juristic entities, the petition must be signed by a patent practitioner unless otherwise specified.
For applications filed before September 16, 2012:
Pre-AIA 37 CFR 1.33(b) allows the petition to be signed by:
- A patent practitioner of record
- A patent practitioner not of record acting in a representative capacity
- An assignee as provided for under pre-AIA 37 CFR 3.71(b)
- All of the applicants (pre-AIA 37 CFR 1.41(b))
It’s crucial to ensure the correct person signs the petition to avoid potential delays or rejections.
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While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:
“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”
The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.
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Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.“
This means that while reference characters can be used to clarify which elements in the detailed description and drawings correspond to elements mentioned in the claims, they don’t change the meaning or breadth of the claim. They serve as a helpful cross-reference tool but don’t limit or expand the claim’s coverage.
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The MPEP 2141.01(a) outlines two distinct tests for determining whether a reference qualifies as analogous art:
- Same Field of Endeavor Test: This test focuses on whether the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem.
- Reasonably Pertinent Test: This test examines whether the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention.
The MPEP emphasizes: “Note that ‘same field of endeavor’ and ‘reasonably pertinent’ are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.”
It’s important to note that a reference only needs to satisfy one of these tests to be considered analogous art. This allows for a broader consideration of prior art that may be relevant to the claimed invention.
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No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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The improvement analysis in Step 2A Prong Two differs from the analysis in Step 2B in a key aspect: consideration of what is well-understood, routine, and conventional activity.
According to the MPEP:
“Specifically, the ‘improvements’ analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity.”
This means that in Step 2A Prong Two:
- The focus is on whether the claim integrates the judicial exception into a practical application.
- The claim may demonstrate an improvement to existing technology even if it does not improve on well-understood, routine, conventional activity.
In contrast, Step 2B considers whether the additional elements amount to significantly more than the judicial exception, which can include an analysis of what is well-understood, routine, and conventional in the field.
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Can patent drawings be used to determine specific dimensions or proportions?
Generally, patent drawings cannot be relied upon to determine specific dimensions or proportions unless explicitly stated to be to scale. According to MPEP 2125:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
However, there are exceptions:
- If the drawing is expressly labeled as being to scale, measurements can be relied upon.
- The overall proportions and relative sizes of elements may be considered if they would be apparent to a person of ordinary skill in the art.
- Specific features clearly shown in the drawings can be used as prior art, even if dimensions are not given.
It’s important to note that while exact measurements are typically not reliable, the drawings can still be used in combination with the written description to determine what would be reasonably taught to one skilled in the art.
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What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
This principle is crucial in evaluating the obviousness of a claimed invention. According to MPEP 2143.01(V):
“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”
This means that when considering whether to combine or modify prior art references to reject a claim as obvious, the examiner must ensure that the proposed changes do not undermine the fundamental purpose or functionality of the original reference. If the modification would make the prior art inoperable or unsuitable for its primary intended use, then the motivation to combine is likely lacking.
Key points to consider:
- The intended purpose of the prior art must be clearly understood
- The impact of the proposed modification on that purpose must be carefully evaluated
- If the modification renders the prior art unsuitable, it weighs against obviousness
- This principle can be a strong argument against an obviousness rejection
Examiners should provide a detailed explanation of how the proposed modification maintains or enhances the prior art’s functionality. Conversely, applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would render a reference unsatisfactory for its intended purpose.
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For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states:
If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective filing date is the earlier of: (1) the filing date of the earliest application in which the subject matter is described; or (2) the actual filing date of the patent or application under examination.
This means that for foreign priority claims, the USPTO will examine the foreign application to ensure it adequately describes the claimed subject matter. If it does, the foreign filing date becomes the effective filing date for that subject matter.
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The “In re Wertheim” case is significant in patent law, particularly regarding claim amendments and written description requirements. The MPEP 2163.05 cites this case:
“In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of ‘25%- 60%’ and specific examples of ‘36%’ and ‘50%.’ A corresponding new claim limitation to ‘35%-60%’ did not meet the description requirement because the phrase ‘25% to 60%’ relates to a range of specific temperature range of 35°C to 60°C.”
This case established that when amending claims to include new range limitations, the new range must be clearly supported by the original disclosure. It’s not enough for the new range to fall within a broader disclosed range; there must be specific support for the endpoints of the new range.
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Enabling prior art for compounds and compositions must allow one of ordinary skill in the art to make or synthesize the compound. As stated in MPEP 2121.02:
“Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound.”
This means that simply mentioning a compound’s name in a reference is not enough to make it enabling prior art. There must be sufficient information for someone skilled in the field to actually produce the compound.
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The USPTO handles translation errors in foreign priority documents for international design applications as follows:
- If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error.
- However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.
This approach is outlined in MPEP 2920.05(d), which states:
“Where an error in the translation of the foreign priority document is only discovered after publication of the international registration, the Office will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.”
It’s important for applicants to ensure accurate translations are provided initially to avoid potential issues later in the application process.
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Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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Yes, an assignment can serve as an inventor’s oath or declaration under certain conditions. According to 37 CFR 1.63(e):
An assignment may also serve as an oath or declaration required by this section if the assignment as executed: (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
This provision implements 35 U.S.C. 115(e). To use an assignment as an oath or declaration:
- The assignment must include all required information and statements of a standard oath or declaration
- It must be executed by the inventor who is under the obligation of assignment
- A copy of the assignment must be recorded with the USPTO
Applicants should use a check-box on the assignment cover sheet to indicate the dual purpose of the document.
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The signature requirements for inventor’s oaths or declarations are as follows:
- There is no requirement for a signature to be made in any particular manner.
- Inventors can use titles such as ‘Dr.’ in their signatures, but these won’t appear in the printed patent.
- Non-English character signatures are accepted.
- If an inventor cannot write, their mark must be witnessed.
According to MPEP § 602.08(b), “There is no requirement that a signature be made in any particular manner.” The section also states, “It is permissible for an applicant to use a title of nobility or other title, such as ‘Dr.’, in connection with their signature. The title will not appear in the printed patent.“
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No, a licensee of exclusive right cannot prosecute a patent application. According to MPEP 106.01, only the assignee of record of the entire interest has the right to intervene in the prosecution of an application. The MPEP states:
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […], an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.
This means that while a licensee of exclusive right can inspect the application, they cannot prosecute it or exclude the applicant from the prosecution process.
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Failure to pay a maintenance fee on time can result in the expiration of the patent. According to MPEP 2506:
“A patent that expires for failure of payment will expire on the day following the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.”
The expiration occurs even if the last day for payment falls on a weekend or holiday. The MPEP clarifies:
“For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired after midnight on Saturday (e.g., on Sunday) if the maintenance fee and surcharge were not paid on the following Monday.”
It’s crucial for patent owners to be aware of these deadlines and ensure timely payment to maintain their patent rights.
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Patent examiners evaluate reasonable expectation of success in obviousness rejections by considering various factors outlined in MPEP 2143.02. The evaluation process involves assessing the prior art, the nature of the problem to be solved, and the knowledge of a person of ordinary skill in the art (POSA).
Key points in the examiner’s evaluation include:
- Prior Art Teachings: Examiners consider the specificity and relevance of prior art teachings to the claimed invention.
- Predictability of the Art: The level of predictability in the relevant field is taken into account.
- Scope of the Claims: The breadth of the claims is considered in relation to the prior art teachings.
- Nature of the Invention: The complexity and technological area of the invention are evaluated.
The MPEP provides guidance on the standard for reasonable expectation of success:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
Examiners must provide a rationale for why a POSA would have had a reasonable expectation of success. This rationale should be based on evidence from the prior art, common knowledge in the field, and logical reasoning. If an applicant provides evidence of unexpected results or teaching away in the prior art, examiners must consider this in their evaluation of reasonable expectation of success.
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A claim should be rejected under 35 U.S.C. 112(a) for lack of written description when the subject matter is not shown in the drawing or described in the description, and the words of the original claim do not sufficiently describe the invention. The MPEP 608.01(l) states: “If the claim does not provide its own description in this case, the claim should be rejected under 35 U.S.C. 112(a) as failing to be supported by an adequate written description.” This means that the claim must provide enough detail for one of ordinary skill in the art to recognize that the inventor had possession of the full scope of the claimed invention.
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How does MPEP 2144.04 address reversal, duplication, or omission of parts in patent applications?
MPEP 2144.04 addresses reversal, duplication, and omission of parts in patent applications through specific subsections:
- Reversal of Parts (VI)(A): “The mere reversal of the working parts of a device involves only routine skill in the art.” – In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)
- Duplication of Parts (VI)(B): “The mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” – In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
- Omission of an Element and Its Function (II)(A): “The omission of an element and its function is obvious if the function of the element is not desired.” – Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)
These legal precedents suggest that reversing, duplicating, or omitting parts in a device or process is generally not considered patentable unless it produces a new and unexpected result or solves a specific problem in a non-obvious way. Patent examiners may use these rationales to reject claims that merely involve such modifications without demonstrating a significant improvement or unexpected outcome.
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For a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2), it must meet specific requirements. According to MPEP 2154.01(a):
“AIA 35 U.S.C. 102(a)(2) sets forth three descriptions of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.”
The requirements for a WIPO published application to be prior art under this section are:
- It must be published under the Patent Cooperation Treaty (PCT)
- It must designate the United States
- It must be published in English
If these conditions are met, the WIPO published application can be used as prior art from its effective filing date, even if that date is before the application’s publication date.
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A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in MPEP 2133.03(e):
“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
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How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:
- Multiple partial assignees of the patent property
- Multiple inventors who have not assigned their rights
- A combination of partial assignee(s) and inventor(s) who have not assigned their rights
In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.
“Patentably indistinct claims” in the context of interfering applications refer to claims from different applications that are substantially similar or overlapping in scope. According to MPEP 2304.01(d):
“Interfering claims of applications with either the same assignee or the same inventive entity are ‘patentably indistinct claims’ within the meaning of 37 CFR 1.78(f).”
These claims are typically subject to consolidation or restriction requirements to streamline the examination process and address potential interferences efficiently.
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Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature. The Manual of Patent Examining Procedure (MPEP) Section 2106.04(b) states:
“The law of nature and natural phenomenon exceptions reflect the Supreme Court’s view that the basic tools of scientific and technological work are not patentable, because the ‘manifestations of laws of nature’ are ‘part of the storehouse of knowledge,’ ‘free to all men and reserved exclusively to none.’”
This means that fundamental scientific principles and naturally occurring things are not eligible for patent protection.
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If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:
‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’
The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on error correction, visit: error correction.
For more information on patent issuance, visit: patent issuance.
For more information on reissue, visit: reissue.
How does the USPTO handle new matter in continuation applications?
The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:
“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”
This means that:
- Continuation applications must be based entirely on the disclosure of the parent application
- Any new subject matter introduced in a continuation application will be rejected as new matter
- If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)
CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.
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Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?
Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:
“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”
However, it’s important to note that for a CIP application:
- New matter in the CIP will only get the benefit of the CIP’s filing date.
- Matter disclosed in the prior application(s) can claim the earlier filing date(s).
- Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.
For more details, see MPEP 211.01 and MPEP 201.08.
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- continuation-in-part
- CIP
- multiple prior applications
- 35 U.S.C. 120
- 35 U.S.C. 121
- 35 U.S.C. 365(c)
- 35 U.S.C. 386(c)
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Yes, a nonprovisional application can be filed by reference to a previously filed application under certain conditions:
- The application must be filed on or after December 18, 2013
- A reference to the previously filed application must be made in an application data sheet
- The reference must indicate that the specification and any drawings of the new application are replaced by the reference
- The reference must specify the previously filed application by application number, filing date, and intellectual property authority
The USPTO states: As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.
However, the USPTO cautions: Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.
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Can the inventor’s oath or declaration be submitted after filing the patent application?
Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:
“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”
However, it’s important to note:
- The application must still name each inventor at the time of filing
- An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
- The oath or declaration should be submitted no later than the date on which the issue fee is paid
Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.
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According to MPEP 602.06, non-English oaths or declarations must meet specific requirements:
- The oath or declaration must be in a language the individual can understand.
- It must state that the individual understands the content of any related documents.
- Unless provided by the USPTO or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation.
- A statement confirming the translation’s accuracy is required.
As stated in the MPEP: “37 CFR 1.69 requires that oaths and declarations be in a language which is understood by the individual making the oath or declaration, i.e., a language which the individual comprehends.”
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Can I file a provisional application in a language other than English?
Yes, you can file a provisional application in a language other than English. However, there are important considerations:
- The USPTO accepts provisional applications in any language.
- An English translation is not required at the time of filing.
- If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.
The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.
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The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.
According to the MPEP:
The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.
Source: MPEP 2133.02(a)
The critical date is important because:
- Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
- It sets a time limit for inventors to file their patent applications after public disclosure.
- It helps determine the validity of potential prior art references in rejections.
Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).
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No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
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Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
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The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
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When submitting replacement drawing sheets for patent applications, applicants should ensure the following:
- Include all figures from the immediate prior version of the sheet, even if only one figure is being amended.
- Label the sheet as ‘Replacement Sheet’ in the top margin.
- Include the application number and art unit in the upper center margin.
- Do not label amended drawing figures as ‘amended’.
- Remove canceled figures and renumber remaining figures if necessary.
The MPEP 608.02(b) states:
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as ‘amended.’
Additionally, a marked-up copy of the replacement sheet with annotations indicating changes may be required.
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“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
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According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
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The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus.
The MPEP states:
“A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”
This means that:
- If a prior art reference clearly names a species that falls within the claimed genus, the genus claim is anticipated.
- The anticipation stands even if the prior art reference discloses multiple species.
- However, if the prior art only discloses a genus without specifically naming the claimed species, it may not anticipate the species claim.
Patent examiners must carefully evaluate the prior art disclosures to determine whether they explicitly or implicitly teach the claimed species within a genus.
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To file a continuation-in-part (CIP) application, several requirements must be met according to MPEP 201.08 and 37 CFR 1.78:
- The CIP must be filed while the prior nonprovisional application is still pending (before patenting, abandonment, or termination of proceedings).
- The CIP must claim benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The CIP must contain a specific reference to the prior application, including the application number.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
- The CIP must have at least one common inventor with the prior application.
It’s important to note that a CIP can only be filed under 37 CFR 1.53(b) and cannot be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
For more information on filing requirements, visit: filing requirements.
For more information on USPTO, visit: USPTO.
What is the filing deadline for a continuation application?
A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. 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.”
Key points to remember:
- There is no specific time limit for filing a continuation as long as the parent application is still pending.
- The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
- If you want to file after the parent is patented, you must file a reissue application instead.
It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.
For more information on continuation application, visit: continuation application.
For more information on filing deadline, visit: filing deadline.
How does the USPTO determine if a negative limitation has written description support?
The USPTO examines negative limitations for written description support based on the guidance provided in MPEP 2173.05(i). The key factors include:
- Express disclosure in the specification
- Inherent disclosure based on what is described
- Original claims
- Drawings that show the absence of a feature
The MPEP states: “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” This means that the negative limitation must be supported by the original specification, either explicitly or implicitly.
For example, if the specification describes a composition “without additive X,” a claim limitation stating “wherein the composition is free of additive X” would likely have sufficient support. However, introducing a negative limitation that was not contemplated in the original disclosure could be considered new matter and rejected under 35 U.S.C. 112(a).
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How does the Internet affect the determination of printed publications in patent law?
The Internet has significantly impacted the concept of printed publications in patent law. According to MPEP 2152.02(b):
“A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
In the context of the Internet, this means:
- Websites and online documents can qualify as printed publications.
- The date a webpage becomes publicly available can be crucial in determining its status as prior art.
- Archived versions of websites (e.g., through the Wayback Machine) may be used to establish publication dates.
- Social media posts, blog entries, and online articles can potentially serve as printed publications.
However, challenges may arise in proving the exact publication date and content of online materials. Patent examiners and courts may require evidence to verify the public accessibility and content of Internet-based references at a specific point in time.
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What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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Patent Procedure (715)
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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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 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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The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
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The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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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 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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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
No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b).
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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.
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.
Pre-AIA 35 U.S.C. 102(b) is significant because it creates a statutory bar to obtaining a patent. According to the MPEP, If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).
This means that any public disclosure, such as a publication, patent, public use, or sale that occurred more than one year before the effective filing date of the claimed invention can prevent the issuance of a patent.
It’s important to note that there’s a grace period provision: Publications, patents, public uses and sales, however, will not bar a patent if the 1-year grace period otherwise ends on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.
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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.
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 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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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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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.
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.
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.
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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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.
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.
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).
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.
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.
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.
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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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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While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:
- Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
- Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
- Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
- Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.
The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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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.
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 terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
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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.
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 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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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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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 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 ‘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.
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.
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.
“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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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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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.
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)
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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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.
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.
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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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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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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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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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.
Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch
. To access these records:
- Visit the USPTO Assignment Search website
- Enter the relevant patent or application number, assignee name, or other search criteria
- Review the search results for assignment information
This online database provides public access to assignment records, allowing for easy verification of patent ownership.
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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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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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.
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.
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 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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Yes, a non-profit sale can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states:
A “sale” need not be for profit to bar a patent. If the sale was for the commercial exploitation of the invention, it is “on sale” within the meaning of pre-AIA 35 U.S.C. 102(b).
(MPEP 2133.03(b))
This interpretation is supported by case law, specifically In re Dybel. The key factor is not whether a profit was realized, but whether the sale was for commercial exploitation of the invention. Even if no profit is made, if the sale was intended to commercially exploit the invention, it can still trigger the on-sale bar.
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The USPTO determines the inventor’s field of endeavor by examining the content of the patent application, particularly the specification. According to MPEP 2141.01(a):
“The examiner must determine what is ‘analogous prior art’ for the purpose of analyzing the obviousness of the subject matter at issue. ‘The determination of what is analogous prior art is fact specific and requires an analysis of the similarities and differences between the purported analogous art and the claimed invention.’”
To determine the field of endeavor:
- Examiners review the specification, including the background section and the detailed description of the invention.
- They consider the problem the inventor was trying to solve.
- The claims are also analyzed to understand the scope of the invention.
- If the specification explicitly states the field of endeavor, that statement is given considerable weight.
It’s important to note that the field of endeavor should be construed broadly to encompass the areas in which one skilled in the art would reasonably be expected to look for a solution to the problem facing the inventor.
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Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:
“The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:
- If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
- Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
- However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.
For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.
It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.
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A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
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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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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Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:
- Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
- Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”
These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.
For more information on multiple assignees, visit: multiple assignees.
For more information on partial assignees, visit: partial assignees.
For more information on patent issuance, visit: patent issuance.
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.
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 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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According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance:
- Article: “An ‘article’ includes a physical object or substance.”
- Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.”
- Change: “‘Transformation’ of an article means that the ‘article’ has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article.”
The MPEP also notes: A new or different function or use can be evidence that an article has been transformed.
It’s important to note that purely mental processes or data manipulation are generally not considered eligible transformations: Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
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The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
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Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option:
“A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.”
This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete, describing a compound by its physical and chemical properties can be an effective way to claim it in a patent application. This method allows inventors to protect their discoveries even when full structural elucidation is not possible or practical.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
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What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention?
35 U.S.C. 112(b) plays a crucial role in determining the subject matter of an invention by requiring clarity and precision in patent claims. According to MPEP 2172:
“35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that the specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
This statute ensures that:
- Claims clearly define the boundaries of the invention
- The public can understand the scope of the patent protection
- Examiners can accurately assess patentability
If claims fail to meet the requirements of 35 U.S.C. 112(b), they may be rejected as indefinite. This emphasizes the importance of drafting claims that precisely capture the invention’s subject matter while being understandable to those skilled in the art.
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A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
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The ‘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.
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.
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.
The standard for indefiniteness in patent claims is based on the “reasonable certainty” test established by the Supreme Court. As stated in MPEP 2173.02:
“A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. 112(b) is whether the claim, read in light of the specification and the prosecution history, would inform those skilled in the art about the scope of the invention with reasonable certainty.”
This standard requires that the claims, when read in light of the specification and prosecution history, must provide clear warning to others as to what constitutes infringement of the patent. The definiteness requirement strikes a balance between the inherent limitations of language and the need for clear patent boundaries.
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Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
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The standard for enablement in prior art references is consistent across all types of prior art, regardless of their origin or format. As stated in MPEP 2121:
“The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.”
An enabling disclosure in a prior art reference must describe the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. However, it’s important to note that:
“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”
This means that a prior art reference can be considered enabling even if it doesn’t prove that the described invention actually works, as long as it provides enough information for a skilled artisan to practice the invention.
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To qualify for micro entity status, an applicant must meet the following requirements:
- Qualify as a small entity
- Not be named as an inventor on more than 4 previously filed patent applications
- Not have a gross income exceeding 3 times the median household income in the previous calendar year
- Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit
Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.
The standard for determining if a claim with inoperative embodiments is still enabled is based on the ability of a skilled person to identify operative and inoperative embodiments without undue experimentation. According to MPEP 2164.08(b):
“The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art.”
This standard, derived from the Atlas Powder Co. v. E.I. du Pont de Nemours & Co. case, emphasizes that the key factor is the level of effort required to identify operative embodiments, not merely the presence of inoperative ones.
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The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s):
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.’”
The USPTO’s stance is based on the principle that claims should be self-contained and clearly define the invention without relying on external references. This approach ensures clarity and avoids potential ambiguity in interpreting the scope of the claims.
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Yes, a patent can be reinstated after expiration due to non-payment of maintenance fees under certain conditions. The MPEP 2590 outlines the process for patent reinstatement:
“The patent may be reinstated if the delay in payment of the maintenance fee was unintentional.”
Key points about patent reinstatement:
- A petition for reinstatement must be filed within 24 months from the expiration date.
- The petition must include a statement that the delay was unintentional.
- All required maintenance fees and any applicable surcharges must be paid.
- The Director of the USPTO must determine that the delay was indeed unintentional.
It’s important to note that the reinstatement process is not automatic and requires a formal petition and fee payment.
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The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with this requirement.
According to the MPEP, “These Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability.”
In essence, the utility requirement ensures that patented inventions are useful and serve a practical purpose.
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How do I update my address for patent correspondence with the USPTO?
To update your address for patent correspondence with the USPTO:
- Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012.
- Use Form PTO/SB/122 for applications filed before September 16, 2012.
- Submit the form to the USPTO’s Mail Stop Post Issue division.
The MPEP states: “A patent owner’s change of address may be filed with the USPTO through the Office of Patent Legal Administration (OPLA).” (MPEP 2805)
Ensure you follow the proper procedures to maintain accurate communication channels with the USPTO regarding your patent.
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Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
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Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
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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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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.”
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP 2109
The MPEP further clarifies:
“[T]here is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states:
If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
(MPEP 2133.03(c))
This principle was established in the case of Abbott Laboratories v. Geneva Pharmaceuticals, Inc., where a patent for a specific crystalline form of a pharmaceutical compound was invalidated due to prior sales, even though the parties involved were unaware of the specific crystalline form at the time of the sales.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
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The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
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The best mode requirement contributes to public disclosure by ensuring that inventors share their most effective method of implementing the invention. This aligns with the patent system’s goal of promoting technological progress. As stated in MPEP 2165.02:
“If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor] at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well.”
By requiring disclosure of the best mode, the patent system prevents inventors from keeping their most valuable insights secret while still obtaining patent protection. This enhances the quality of information available to the public and other inventors, fostering further innovation in the field.
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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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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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When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
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The MPEP provides several examples of concepts and products that courts have identified as laws of nature or natural phenomena, which are not patentable. Some of these include:
- Isolated DNA
- Cloned farm animals
- Correlations between DNA variations and allele presence
- Metabolic correlations in the body
- Mathematical formulas (e.g., E=mc²)
- Electromagnetic signals
- Qualities of bacteria
- Single-stranded DNA fragments (primers)
- Chemical principles
- Cell-free fetal DNA in maternal blood
The MPEP Section 2106.04(b) states: “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter under Section 101. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity.”
These examples illustrate that naturally occurring phenomena and fundamental scientific principles are generally not eligible for patent protection.
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35 U.S.C. 102(b)(2) provides three important exceptions to what would otherwise be considered prior art under 35 U.S.C. 102(a)(2). The MPEP outlines these exceptions:
- 102(b)(2)(A): “limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(B): “excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”
- 102(b)(2)(C): “excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, ‘were owned by the same person or subject to an obligation of assignment to the same person.’”
These exceptions provide important protections for inventors and applicants in various scenarios involving disclosures and ownership of inventions.
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The effect of the preamble on claim interpretation is determined on a case-by-case basis. As stated in MPEP 2111.02, “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.”
Generally, the preamble limits the claim if:
- It recites essential structure or steps
- It’s necessary to give life, meaning, and vitality to the claim
- It’s used to define the scope of the claimed invention
As the Federal Circuit stated in Bell Communications Research, Inc. v. Vitalink Communications Corp., “[A] claim preamble has the import that the claim as a whole suggests for it.”
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New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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The “ready for patenting” requirement is the second prong of the Pfaff test for determining if an invention was “on sale” for the purposes of the on-sale bar. According to MPEP 2133.03(b), an invention is “ready for patenting” when either:
- The invention is reduced to practice; or
- The inventor has prepared drawings or other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention.
This requirement ensures that the invention was sufficiently developed at the time of the offer for sale. It prevents inventors from claiming the on-sale bar doesn’t apply because the invention wasn’t complete, even if they were commercially exploiting the concept.
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For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
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The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
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The written description and enablement requirements are separate and distinct, as stated in the MPEP:
“This requirement is separate and distinct from the enablement requirement.”
While both requirements are part of 35 U.S.C. 112(a), they serve different purposes:
- The written description requirement ensures that the inventor had possession of the claimed invention at the time of filing.
- The enablement requirement ensures that the invention is described in sufficient detail for one skilled in the art to make and use it.
It’s possible for a specification to enable making and using the invention but still fail to provide adequate written description. Conversely, a specification might provide adequate written description but fail to enable the invention.
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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.
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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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:
- Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
- Electronic filing systems may be available 24/7, but the official filing date will be the next business day
MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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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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An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:
Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
Key points to remember:
- Each distinct subject, inquiry, or order should be in a separate paper.
- This applies to both patent and trademark correspondence.
- Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.
If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.
Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.
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The deadline for filing an unintentionally delayed priority claim is the later of:
- Four months from the actual filing date of the later-filed application, or
- Sixteen months from the filing date of the prior application
This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.
As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’
- The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
- The petition fee as set forth in § 1.17(m); and
- A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
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The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication 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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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.
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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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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Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
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To determine whether your patent application is subject to AIA (America Invents Act) or pre-AIA laws, you need to consider the effective filing date of your claimed invention. According to MPEP 2159:
“Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”
To determine which laws apply:
- Identify the effective filing date of your claimed invention.
- If the effective filing date is on or after March 16, 2013, your application is subject to AIA laws.
- If the effective filing date is before March 16, 2013, your application is subject to pre-AIA laws.
- For applications with multiple claims, if any claim has an effective filing date on or after March 16, 2013, the entire application is subject to AIA laws.
Consult with a patent attorney or agent for a precise determination, as the effective filing date can be affected by factors such as priority claims, continuation applications, and the specific content of the application.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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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.
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
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AIA 35 U.S.C. 102(d) allows the use of foreign priority application filing dates as the effective filing date for prior art purposes, which is a significant change from pre-AIA law. The MPEP states:
“AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.“
This means that if a U.S. patent document claims priority to a foreign application, and that foreign application describes the subject matter in question, the effective filing date for prior art purposes can be the filing date of the foreign application. This change potentially creates more prior art by allowing earlier effective filing dates based on foreign priority claims.
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The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
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The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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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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No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
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A Customer Number is a USPTO-assigned number that can be used to:
- Designate the correspondence address for a patent application or patent
- Designate the fee address for a patent
- Submit a list of practitioners with power of attorney
According to MPEP 403: “A Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.”
Using a Customer Number simplifies making changes to correspondence addresses and practitioner information across multiple applications.
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 more information on power of attorney, visit: power of attorney.
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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What is the difference between recording a license and an assignment at the USPTO?
The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:
- Assignment: Transfers ownership of the patent or application to another party.
- License: Grants permission to use the patent or application without transferring ownership.
According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a).
This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.
Claiming 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).”
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
What is the purpose of the Issue Notification in the patent application process?
The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:
- Informs the applicant of the official issue date of their patent
- Provides the assigned patent number
- Serves as confirmation that the patent will be granted
- Helps applicants plan for any post-issuance actions or maintenance fees
The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.
For more information on issue date, visit: issue date.
For more information on patent grant, visit: patent grant.
The concept of “clear improvement” in MPEP § 2106.06(b) relates to the Alice/Mayo test by potentially allowing claims to bypass parts of the test. The MPEP states:
“Although the Federal Circuit held these claims eligible at Step 2A as not being directed to abstract ideas, it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being directed to an abstract idea.“
This means that if a claim shows a clear improvement to technology or computer functionality, it might be found eligible without going through the entire Alice/Mayo test. The claim could be considered eligible at Pathway A (streamlined analysis) or at Step 2A of the Alice/Mayo test, depending on the examiner’s assessment of the improvement.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior foreign application
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
The Image File Wrapper (IFW) system is an electronic system used by the USPTO to store and process patent application files. Key points about the IFW system and its impact on public access include:
- Paper components of application files are scanned to create electronic image files
- For IFW applications, the electronic file is the Official file
- No access is granted to original paper documents used to create the IFW file
- Processing and examination are conducted using electronic images
- IFW files for patented applications, published applications, or applications referenced in published documents are accessible through Patent Center on the USPTO website
- All patent applications filed after June 30, 2003, have been scanned into the IFW system
The IFW system has made it easier for the public to access eligible patent application files online through Patent Center, eliminating the need to physically inspect paper files in many cases.
The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains:
“A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
This is particularly important in unpredictable arts or when claiming a broad genus. A single species may not be sufficient to support claims to a broad genus if there is substantial variation within that genus. The number of species required depends on the particular invention, the size of the genus, and the level of skill and knowledge in the art.
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For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
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.
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The AIA 35 U.S.C. 102(b)(2)(A) exception applies broadly to U.S. patent documents. According to the MPEP:
The 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the 35 U.S.C. 102(b)(2)(A) exception.
This means that the exception can potentially be applied to any U.S. patent, U.S. patent application publication, or WIPO published application, regardless of when it was published or filed. The key factor is whether the subject matter was obtained directly or indirectly from the inventor or joint inventor.
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How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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A “Sequence Listing” is a separate part of a patent application that contains disclosures of nucleotide and/or amino acid sequences, along with associated information, using a standardized format and symbols. According to MPEP 2421.01, it is required for applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a).
The MPEP states: 37 CFR 1.821(c) requires that applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) contain, as a separate part, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR 1.822 and 37 CFR 1.823.
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The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
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The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
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Yes, an abandoned application can be used as prior art, but the extent of its use depends on several factors. Under MPEP 2127, abandoned applications that have been published can be used as prior art as of their publication date for all they teach. Unpublished abandoned applications may be available as prior art under certain circumstances, such as when they are incorporated by reference in a U.S. patent. It’s important to note that the abandonment status itself does not negate the application’s potential as prior art. For specific rules on using abandoned applications as prior art, consult MPEP 2127 and MPEP 901 on prior art.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
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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Acting in a representative capacity refers to a patent practitioner appearing in person or signing papers on behalf of a client before the United States Patent and Trademark Office (USPTO) in a patent case. According to 37 CFR 1.34, when a patent practitioner acts in this capacity, their personal appearance or signature constitutes a representation that they are authorized to represent the particular party on whose behalf they are acting.
The MPEP states: “When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts.”
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Yes, there are exceptions to the rule against using trademarks or trade names as claim limitations. The MPEP 2173.05(u) states:
“Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982) states that a trademark or trade name is permissible in a claim to identify the source of goods.“
This exception allows for the use of trademarks or trade names in claims under specific circumstances:
- When used to identify the source of goods, rather than the goods themselves.
- If the trademark or trade name is used in conjunction with the trademark’s generic terminology.
- When the use does not affect the clarity or definiteness of the claim.
However, it’s important to note that even when identifying the source, care should be taken to ensure the claim remains clear and definite.
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For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
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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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Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
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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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Are there any fee reductions or waivers available for USPTO patent fees?
Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:
- Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
- Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.
To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.
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‘Mental processes’ are concepts that can be performed in the human mind or with the aid of pen and paper. According to MPEP 2106.04(a)(2):
The courts consider a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.
Mental processes include:
- Observations
- Evaluations
- Judgments
- Opinions
Importantly, claims can recite a mental process even if they are performed on a computer. The MPEP states: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”
However, claims that cannot practically be performed in the human mind do not recite a mental process. For example, a claim to detecting suspicious activity by using network monitors and analyzing network packets would not be considered a mental process.
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Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states:
“A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or the time the invention was made for applications or patents subject to pre-AIA law.”
This means that the prior art must provide enough detail for someone skilled in the field to reproduce the invention without excessive difficulty.
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An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
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While using trademarks or trade names in patent claims can be problematic, they can be used more freely in the patent specification. Here are guidelines for proper use:
- Use the trademark or trade name in conjunction with the generic terminology.
- Indicate that the term is a trademark, e.g., by using the ™ or ® symbol.
- Clarify the source of the trademark or trade name.
- Provide a clear description of the product or material associated with the trademark.
The MPEP 608.01(v) provides guidance on the use of trademarks in patent applications:
“If the product to which the trademark refers is set forth in such language that its identity is clear, the identification is sufficient. Where the product is set forth in the specification in language which is not clear, the examiner should require the applicant to use language which is clear.“
By following these guidelines, you can use trademarks or trade names in the specification while maintaining clarity and avoiding potential indefiniteness issues.
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Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
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Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):
37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).
To change the order of inventors’ names, you must:
- Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
- Pay the processing fee set forth in 37 CFR 1.17(i).
Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.
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What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
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Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.’”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
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Yes, a continuation application can claim priority to multiple parent applications under certain conditions. According to MPEP 201.07:
‘A continuation application may be filed as a continuation of an earlier application of the same applicant… The continuation application may be filed before the patenting or abandonment of or termination of proceedings on the prior application.’
This means that:
- The continuation must have at least one common inventor with the parent application(s).
- The continuation must be filed while at least one of the parent applications is still pending.
- The continuation cannot introduce new matter beyond what was disclosed in the parent application(s).
When claiming priority to multiple parents, the continuation essentially combines the disclosures of the parent applications, as long as they form a continuous chain of copending applications.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
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What is the difference between pre-AIA and AIA treatment of patent prior art?
The America Invents Act (AIA) introduced significant changes to how patent prior art is treated compared to the pre-AIA system. The MPEP 2152.02(a) highlights a key difference:
“The AIA draws no distinction between patents and published patent applications as prior art.”
This change has several important implications:
- Pre-AIA: There were different rules for patents and published applications as prior art.
- AIA: Patents and published applications are treated equally as prior art.
- Pre-AIA: Secret prior art in granted patents had limited prior art effect.
- AIA: All content of a granted patent, including previously confidential information, becomes prior art upon grant.
- Pre-AIA: The effective date of a U.S. patent as prior art could be its foreign priority date under certain conditions.
- AIA: The effective date of a U.S. patent as prior art is its earliest effective filing date, including foreign priority date if applicable.
These changes simplify the prior art analysis and expand the scope of available prior art under the AIA system.
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The USPTO acknowledges receipt of foreign priority claims in several ways:
- If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
- For priority documents filed in a parent application, the examiner may use form paragraph 2.27
- If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues
MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
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When claiming a genus in a patent application, working examples play an important role in demonstrating enablement. The MPEP 2164.02 provides guidance on this issue:
“For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation.”
Key points about working examples and genus claims:
- Representative examples can support enablement for the entire genus
- The examples should be considered along with the level of skill in the art and the specification’s information
- Proof of enablement for other members of the genus may be required if the examiner provides adequate reasons
- The examiner must establish that a person skilled in the art could not use the genus as a whole without undue experimentation
It’s important to note that the number of examples needed depends on the predictability of the art and the breadth of the claims.
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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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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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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 effective filing date for a claimed invention is determined as follows:
- The actual filing date of the application containing the claim, or
- The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit
The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
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What is the difference between a negative limitation and a disclaimer in patent claims?
While both negative limitations and disclaimers involve excluding certain elements or features from patent claims, they have distinct characteristics and purposes:
Negative Limitations:
- Are part of the original claim language
- Explicitly state what is not included in the claimed invention
- Must have support in the original disclosure
- Example: “A composition free of copper”
Disclaimers:
- Are typically added after the original filing
- Used to overcome prior art rejections or avoid double patenting
- Can sometimes introduce limitations not originally disclosed
- Example: “A disclaimer of the portion of the term of a patent that extends beyond the expiration date of another patent”
The MPEP 2173.05(i) focuses primarily on negative limitations, stating:
“The mere absence of a positive recitation is not a basis for an exclusion. Any negative limitation or exclusionary proviso must have basis in the original disclosure.”
This emphasizes that negative limitations must be supported by the original disclosure, while disclaimers may sometimes introduce new limitations to overcome specific issues during prosecution.
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Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
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Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
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When a claim covers multiple structures or compositions, anticipation can occur if any one of those structures or compositions is known in the prior art. The MPEP 2131 cites a Federal Circuit case:
When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.
(Brown v. 3M)
This means that for a claim covering multiple options, finding just one of those options in the prior art can be sufficient for an anticipation rejection.
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The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
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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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Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
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The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
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What is the USPTO’s policy on federal holidays?
The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:
- The USPTO is closed on all federal holidays.
- Deadlines that fall on a federal holiday are extended to the next business day.
- Correspondence is not accepted or processed on federal holidays.
According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.
It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.
The ‘statement of unintentional delay’ is a crucial component of a petition to accept an unintentionally delayed priority claim. According to MPEP 214.02:
The Director may require additional information where there is a question whether the delay was unintentional.
This statement must affirm that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. It’s important to note that:
- The USPTO requires an additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.
- The statement must be signed by a person who has sufficient knowledge of the facts to support the statement.
- Providing an inadequate or insufficient explanation may lead to a request for further information, which could delay the petition process.
Applicants should be prepared to provide a detailed account of the circumstances that led to the delay, ensuring that it covers the entire period of delay and demonstrates that the delay was truly unintentional.
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35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
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A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.
The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”
For more detailed information on cover sheets, refer to MPEP § 302.07.
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For more information on USPTO requirements, visit: USPTO requirements.
Under the new Sequence Rules, patent applicants must submit sequence listings in a specific format. MPEP 2412.01 states that “an applicant is required to submit sequence data… in eXtensible Markup Language (XML) format.”
This XML file must conform to the requirements specified in 37 CFR 1.831 – 1.834, which in turn reference particular paragraphs of WIPO Standard ST.26. The use of XML format ensures standardization and machine-readability of sequence data across different patent offices worldwide.
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Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
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To file a petition to accept an unintentionally delayed benefit claim, you should:
- File the petition under 37 CFR 1.78
- Explain the reasons for the delay and demonstrate that it was unintentional
- Pay the required petition fee
- Submit the benefit claim (either through a corrected ADS or specification amendment, depending on your application’s filing date)
As mentioned in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04).”
For more detailed information on filing these petitions, refer to MPEP § 211.04.
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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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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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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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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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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Yes, a patent application can proceed without all inventors’ signatures under certain circumstances. The MPEP 409.03(d) provides guidance on this matter:
If an inventor is deceased, refuses to execute an application, or cannot be found or reached after diligent effort, the application may be made by the other inventor(s) on behalf of themselves and the non-signing inventor.
To proceed without all signatures, the applicant must:
- File the application on behalf of themselves and the non-signing inventor
- Provide proof of the inventor’s unavailability or refusal
- Submit an oath or declaration by the other inventor(s)
- Include a petition under 37 CFR 1.47
The USPTO will review the evidence and may grant the petition, allowing the application to proceed without the missing signature.
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If a priority claim needs to be corrected after a patent has been issued, it must be done through a certificate of correction. The MPEP Section 213.04 states:
“If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.”
To obtain a certificate of correction, the patent owner must file a request with the USPTO, pay the required fee, and provide a statement explaining the error and how it occurred. The USPTO will then review the request and, if approved, issue a certificate of correction to be attached to the patent.
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The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP § 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
According to MPEP 203.05, there are four main reasons for patent application abandonment:
- Formal abandonment by the applicant or their representative
- Failure of the applicant to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, the passage of 12 months from the filing date
The MPEP states: An abandoned application is, inter alia, one which is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record; (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application; (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application
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Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:
‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’
This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.
There are three main types of national applications for patents in the United States:
- Nonprovisional applications filed under 35 U.S.C. 111(a)
- Provisional applications filed under 35 U.S.C. 111(b)
- International applications that have entered the national stage in the United States
As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”
For more information on international applications, visit: international applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
How long does it take for a patent assignment to be recorded by the USPTO?
The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:
- Method of submission (electronic vs. paper)
- Completeness and accuracy of the submitted documents
- Current USPTO workload
According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.
For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.
When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.
This rule applies to various USPTO actions, including:
- Filing responses to Office Actions
- Paying maintenance fees
- Submitting other time-sensitive documents
It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO deadlines, visit: USPTO deadlines.
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
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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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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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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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A statement under 37 CFR 1.97(e) is a declaration that either:
- Each item of information in the IDS was first cited in a foreign patent office communication no more than 3 months prior to the IDS filing, or
- No item in the IDS was cited by a foreign patent office, and no item was known to anyone with a duty of disclosure more than 3 months prior to the IDS filing.
This statement is required when submitting an IDS after a first Office action but before a final Office action, Notice of Allowance, or Quayle action, unless a fee is paid. It’s also required when submitting an IDS after a final Office action, Notice of Allowance, or Quayle action (along with the fee).
As stated in MPEP 609.04(b): “A statement under 37 CFR 1.97(e) can contain either of two statements. One statement is that each item of information in an information disclosure statement was first cited in any communication, such as a search report, from a patent office outside the U.S. in a counterpart foreign application not more than three months prior to the filing date of the statement.”
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If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:
- The IDS will not be considered by the examiner
- The IDS will be placed in the application file
- The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
- A petition under 37 CFR 1.313(c) is required to withdraw the application from issue
MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”
The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”
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A continuation application can have significant implications for the patent term. Here are key points to understand:
- Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
- 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
- No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
- Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.
It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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Working examples play a significant role in determining enablement for patent applications, although they are not always required. According to MPEP 2164.06:
“The presence of a working example in the specification is not always necessary to satisfy the enablement requirement. However, where a working example is necessary for enablement, the quantity of experimentation required must be determined.”
Key points about working examples:
- They can demonstrate the practicality and operability of the invention
- They provide concrete guidance on how to make and use the invention
- Their necessity depends on the nature of the invention and the state of the art
- In unpredictable arts, working examples may be more critical for enablement
- The absence of working examples may be overcome by other forms of disclosure
Examiners consider working examples as part of the overall assessment of enablement. While helpful, the lack of working examples does not automatically mean the application fails to meet the enablement requirement if other factors support enablement.
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Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:
‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’
Key differences between provisional and non-provisional applications:
- Provisional applications have a simplified filing process and lower fees.
- They do not require formal patent claims or an oath or declaration.
- Provisional applications are not examined and automatically expire after 12 months.
- To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.
Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.
For more information on Non-provisional application, visit: Non-provisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:
- Certificates issued by appropriate authorities showing a change of name of a business
- Certificates showing a merger of businesses
The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.
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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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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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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According to 35 U.S.C. 113, drawings are required ‘where necessary for the understanding of the subject matter sought to be patented.’ Specifically:
- For applications filed on or after December 18, 2013 (except design applications), drawings are not required to receive a filing date, but may still be necessary to fully disclose the invention.
- For applications filed before December 18, 2013, drawings were required at filing if necessary for understanding the invention.
- Design applications must include drawings to receive a filing date.
The USPTO recommends including drawings in most cases, as they help ensure the requirements of 35 U.S.C. 113 are met for any claimed invention.
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When referencing figures in the Brief Description of Drawings section of a patent application, you should:
- Refer to each figure by its number (e.g., Figure 1, Figure 2)
- Provide a brief explanation of what each figure represents
The MPEP 608.01(f) states:
The specification must contain or be amended to contain a brief description of the several views of the drawings.
For example:
Figure 1 is a perspective view of the invented device.
Figure 2 is a cross-sectional view of the device shown in Figure 1.
Keep the descriptions concise and avoid detailed explanations, which belong in the Detailed Description section.
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When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
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The basic filing fee for a provisional application must be paid either:
- At the time of filing, or
- Within the time period set forth in 37 CFR 1.53(g)
If no correspondence address is provided, the applicant has two months from the filing date to pay the basic filing fee, submit the cover sheet, and pay the surcharge. The MPEP states:
If no correspondence address has been provided, applicant has two months from the filing date to file the basic filing fee, cover sheet, and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the provisional application.(MPEP 601.01(b))
It’s important to note that timely payment of the filing fee is crucial if you intend to claim the benefit of the provisional application in a later-filed nonprovisional application.
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If you miss both the maintenance fee payment and the 6-month grace period, your patent will expire. However, the USPTO may accept late payments under certain conditions. According to MPEP 2501:
“The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional.”
To reinstate the patent, you must file a petition showing the delay was unintentional and pay the maintenance fee along with any required surcharges. If accepted, “the patent shall be considered as not having expired at the end of the grace period.”
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How does the preamble affect claim interpretation in patent applications?
The preamble can significantly affect claim interpretation in patent applications. According to MPEP 2111.02, the effect of the preamble on claim scope can be summarized as follows:
- If the body of the claim fully and intrinsically sets forth the complete invention, and the preamble merely states the purpose or intended use, the preamble is generally not considered a limitation.
- However, if the preamble is “necessary to give life, meaning, and vitality” to the claim, it must be construed as a limitation.
- The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case.
The MPEP states: “Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” This means that if the preamble introduces essential structure or steps, or if it’s necessary to understand the claim as a whole, it will be considered limiting.
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Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
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The MPEP states that “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” However, it’s important to note that a secret use of a process, even if the resulting product is commercially sold, does not necessarily constitute public use under pre-AIA 35 U.S.C. 102(a).
The key factor is whether the public could learn the claimed process by examining the product. If the process cannot be discerned from the product, then the commercial sale of the product resulting from a secret process does not qualify as public use under pre-AIA 35 U.S.C. 102(a).
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For patent applications filed on or after January 1, 2022, the USPTO has specific procedures for handling defective sequence listings. According to MPEP 2422.07:
“Applications filed on or after January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be accepted and the defective sequence listing will be treated in accordance with 37 CFR 1.52(e)(8).”
This means:
- The application will be accepted for filing.
- The applicant will be notified of the defective sequence listing.
- The applicant will be given a period of time to correct the defective sequence listing.
- If the defect is not corrected within the specified time, the application may be held abandoned.
It’s important to note that this procedure differs from that for applications filed before January 1, 2022, which were subject to different rules regarding sequence listing defects.
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Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
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There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.
This means that:
- A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
- A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
- Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.
For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:
- For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
- All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
- Substitute specification: The Office may require a substitute specification for preliminary amendments.
The MPEP states:
Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.
It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:
Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.
For more information on continuation application, visit: continuation application.
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
The MPEP addresses the use of “substantially” in patent claims in MPEP 2173.05(b). The term is often used to mean “the same as if fully met,” as in “substantially horizontal.” The MPEP states:
“The term ‘substantially’ is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).”
However, the acceptability of the term depends on whether it can be interpreted by a person of ordinary skill in the art with reasonable certainty. If the term’s meaning is reasonably ascertainable in the context of the invention, it may be acceptable. Otherwise, it could render the claim indefinite.
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According to MPEP 406, when the USPTO notifies an applicant of their patent practitioner’s death, the applicant is given a specific timeframe to respond. The MPEP states:
“The period for reply to such a notice is normally set at 3 months.”
During this 3-month period, the applicant must take one of the following actions:
- Appoint a new registered patent practitioner
- File a change of correspondence address
It’s crucial to respond within this timeframe to prevent the application from being deemed abandoned.
For more information on application abandonment, visit: application abandonment.
For more information on patent practitioner death, visit: patent practitioner death.
For more information on response time, visit: response time.
For more information on USPTO notification, visit: USPTO notification.
No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
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No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
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Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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If an inventor has no middle name, their name should be formatted using only their given name (first name) and family name (last name). The MPEP 602.08(b) provides guidance on this:
If an inventor does not have a middle name or initial, then the field for middle name or initial should be left blank.
It’s important to note that the absence of a middle name should not be confused with the use of initials. If an inventor commonly uses initials in place of their full given name, this should be indicated appropriately on the application.
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An Information Disclosure Statement (IDS) is a mechanism by which patent applicants can comply with the duty of disclosure provided in 37 CFR 1.56. It allows applicants to submit information that is material to patentability to the U.S. Patent and Trademark Office (USPTO).
According to the MPEP, The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS.
This means that an IDS is a formal way to disclose relevant prior art and other information to the patent examiner.
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Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:
- Submit the license document to the USPTO’s Assignment Recordation Branch
- Include a cover sheet with the required information
- Pay the appropriate fee
MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.
Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.
Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements:
- Complete Conception: There must be evidence of complete conception by another person. The MPEP states:
Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
- Communication: The complete conception must be communicated to the alleged deriver. The MPEP clarifies:
Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.
Importantly, the party alleging derivation does not need to prove certain elements. The MPEP notes:
- An actual reduction to practice is not required to show derivation.
- The derivation does not need to be of public knowledge.
- The site of derivation does not need to be in the United States.
When evaluating evidence of derivation, patent examiners and the courts will consider these factors to determine if a rejection under pre-AIA 35 U.S.C. 102(f) is appropriate.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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What happens if an IDS is filed after the mailing of a final Office action?
If an Information Disclosure Statement (IDS) is filed after the mailing of a final Office action, the examiner will consider it according to specific guidelines:
- The IDS will be considered if it’s accompanied by either a statement as specified in 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p).
- If these requirements are not met, the IDS will be placed in the application file but will not be considered by the examiner.
As stated in MPEP 609.05(c): ‘Consideration by the examiner of an IDS submitted after the mailing of a final Office action is limited to the requirements set forth in 37 CFR 1.97(d) and to documents which the examiner determines to be relevant.’ This means that even if the IDS is considered, the examiner is not required to reopen prosecution or issue a new Office action based on the newly submitted information.
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The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01:
“Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.”
The MPEP emphasizes that many research tools, such as gas chromatographs and screening assays, have clear, specific, and unquestionable utility. The key is to distinguish between inventions with specifically identified substantial utility and those whose asserted utility requires further research to identify or confirm.
For intermediate products, the MPEP states that a claim to an intermediate product for use in making a final product that has no specific, substantial, and credible utility would not meet the utility requirement. The focus should be on whether the claimed invention has a real-world use that provides an immediate benefit to the public.
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Joint inventorship occurs when an invention is made by two or more persons jointly. According to 35 U.S.C. 116, joint inventors can apply for a patent even if:
- They did not physically work together or at the same time
- Each did not make the same type or amount of contribution
- Each did not contribute to every claim of the patent
The MPEP states: “A person who shares in the conception of a claimed invention is a joint inventor of that invention.”
This means that contributing to the inventive concept is crucial for joint inventorship.
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No, a PCT application does not need to enter the national stage in the United States to be considered prior art under the AIA. The MPEP clearly states:
Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
This means that as long as the PCT application designates the United States and is published by WIPO, it can be used as prior art under AIA 35 U.S.C. 102(a)(2). This is a significant change from pre-AIA law and expands the scope of prior art that must be considered in patentability determinations.
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The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
Under AIA 35 U.S.C. 102(a), there are two main categories of prior art:
- AIA 35 U.S.C. 102(a)(1): This includes documents and activities such as issued patents, published applications, non-patent printed publications, public use, sale, or other public availability of the claimed invention.
- AIA 35 U.S.C. 102(a)(2): This specifically covers U.S. patent documents.
The MPEP states: “The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2).” This means that these categories are used to determine the novelty and non-obviousness of a claimed invention.
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Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this:
“In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.”
However, the MPEP also warns:
“In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b) and explain why there is confusion.”
Therefore, while ‘optionally’ can be used, it’s crucial to ensure that it doesn’t introduce ambiguity into the claim.
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The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:
1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.
2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.
3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.
4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.
5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.
As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
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If a sequence listing XML file is not submitted within the time period set in the notice, the application may be held abandoned. According to MPEP 2414:
“If applicant fails to timely provide the required sequence listing XML file, the application will be held abandoned.”
It’s crucial for applicants to respond promptly to any notices regarding sequence listing requirements to avoid potential abandonment of their application.
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How does the USPTO define ‘new matter’ in patent applications?
The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):
“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”
This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:
- Additional text in the specification
- New or modified claim elements
- Changes to drawings or the addition of new figures
- Incorporation of external references not properly incorporated on the filing date
It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”
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According to the MPEP, non-limiting examples of claims that are not directed to any of the statutory categories include:
- Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations
- Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave
- Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA)
The MPEP further clarifies: “Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture, and is not composed of matter such that it would qualify as a composition of matter.“
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A terminal disclaimer can affect the term of a patent, but it does not change the maintenance fee payment requirements. According to MPEP 2520:
“The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between the latest due date and the term set in 35 U.S.C. 154, it is still required that the entire maintenance fee amount for the due date be paid.”
This means that even if a terminal disclaimer shortens the patent term, you are still obligated to pay the full maintenance fee for each due date that occurs before the patent expires. The USPTO does not prorate or reduce maintenance fees based on a shortened patent term resulting from a terminal disclaimer.
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Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.“
The MPEP emphasizes that this is a “necessity doctrine, not for applicant’s convenience.” This means that referencing figures or tables should be a last resort when it’s impossible to describe the invention adequately using words alone.
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What are “narrow and broader ranges” in the same claim?
“Narrow and broader ranges” in the same claim refer to situations where a patent claim includes both a specific value or narrow range and a broader range that encompasses the narrow range. The MPEP 2173.05(c) addresses this issue:
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”
For example, a claim might state “a length of 5 to 25 centimeters, preferably 15 to 20 centimeters.” This practice can lead to indefiniteness because:
- It’s unclear which range is actually being claimed
- The word “preferably” doesn’t clearly define the claim scope
- It may create uncertainty about the intended protection
Examiners must carefully evaluate such claims to ensure they meet the definiteness requirement under 35 U.S.C. 112(b).
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Why doesn’t the USPTO return original assignment documents after recording?
The USPTO does not return original assignment documents after recording to maintain a permanent, unaltered record and to prevent potential disputes or fraud. According to MPEP 302.01: ‘The USPTO will not return documents filed for recording.’ This policy serves several purposes:
- Ensures the integrity of the recorded documents
- Prevents alterations or substitutions after recording
- Maintains a consistent and reliable archive
- Reduces administrative burden and potential for loss
By keeping all submitted documents, the USPTO can provide certified copies if needed for legal or business purposes, ensuring a reliable chain of title for patent rights.
How should color drawings be submitted in patent applications?
Color drawings in patent applications require special handling:
- A petition for color drawings must be filed with the application.
- Three sets of color drawings or color photographs must be submitted.
- The specification must contain the reference to color drawings.
The MPEP 608.02 states: ‘Color drawings are not permitted in design applications. See 37 CFR 1.84(a)(2) and MPEP § 608.02(VIII).’
For utility patents, color drawings may be accepted if they are necessary for the understanding of the invention. However, they are not encouraged due to reproduction costs and potential issues with public access.
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Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
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Can a Canadian patent agent represent U.S. patent applicants before the USPTO?
Yes, a Canadian patent agent can represent U.S. patent applicants before the USPTO under certain conditions. According to MPEP 402.01:
‘The Canadian Intellectual Property Office and the United States Patent and Trademark Office have agreed on a procedure to allow for the reciprocal recognition of patent agents and attorneys registered to practice before their respective Offices.’
This means that registered Canadian patent agents can apply for and be granted limited recognition to represent U.S. patent applicants before the USPTO. However, this recognition is subject to specific conditions and requirements set by the OED Director.
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The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).
As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
(MPEP 210)
Key points about restoration of the right of priority:
- It applies to both foreign priority claims and domestic benefit claims to provisional applications.
- The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
- The delay in filing the subsequent application must be unintentional.
- A petition for restoration of the right of priority must be filed.
The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.
For more information on PLTIA, visit: PLTIA.
For more information on unintentional delay, visit: unintentional delay.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
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When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
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What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
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The “Art Recognized Suitability for an Intended Purpose” doctrine is a legal principle in patent law that relates to the obviousness of an invention. It states that selecting a known material or component for its recognized suitability for an intended use can support a prima facie case of obviousness.
As stated in MPEP 2144.07:
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” in the landmark case of Sinclair & Carroll Co. v. Interchemical Corp.
This doctrine suggests that if a person of ordinary skill in the art would recognize a material or component as suitable for a particular purpose, using that material or component for that purpose may be considered obvious and thus potentially unpatentable.
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A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement.
MPEP 2166 provides a form paragraph for rejecting single means claims:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
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According to MPEP 2515, anyone can pay maintenance fees for a patent. Specifically, the section states:
“The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee.“
This means that the patent owner, a legal representative, or even a third party can submit the payment. No special authorization is required for someone other than the patentee to pay the fees.
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Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
What are the requirements for citing NPL documents in an IDS?
When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):
“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”
The MPEP further clarifies:
- For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
- The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.
Additionally:
- For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
- If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.
Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.
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Can a foreign patent agent with limited recognition represent applicants in all USPTO matters?
No, a foreign patent agent with limited recognition cannot represent applicants in all USPTO matters. The MPEP clearly states that A foreign patent agent granted limited recognition may not represent applicants or parties in trademark matters, ex parte or inter partes appeals to the Patent Trial and Appeal Board, petitions to the Director of the USPTO, disciplinary proceedings, or in any other matter before the Office.
(MPEP 402.01) Their representation is strictly limited to the presentation and prosecution of patent applications before the USPTO.
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MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
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Information Disclosure Statement (IDS) requirements for international design applications designating the United States are similar to those for domestic national applications:
- The duty to disclose information material to patentability applies to individuals associated with the filing and prosecution of the application.
- An IDS must adhere to the requirements set forth in 37 CFR 1.97, 1.98, and 1.33(b) for consideration by the examiner.
- An IDS filed within three months of the publication date of the international registration will be considered by the Office under 37 CFR 1.97(b)(5).
- IDSs filed after this period may be considered as provided in 37 CFR 1.97.
As stated in the MPEP: An international design application designating the United States has the effect of a U.S. patent application and thus is subject to 37 CFR 1.56.
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The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:
“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”
The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
Including the object of the invention in the Brief Summary is optional but permissible. According to MPEP 608.01(d), “A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description.” The MPEP further clarifies that “The brief summary should be more than a mere statement of the objects of the invention, which statement is also permissible under 37 CFR 1.73.” This means that while you can include the object of the invention, it should not be the sole content of the Brief Summary. The summary should primarily focus on describing the nature and substance of the invention itself.
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What happens if joint inventors can’t agree on filing a patent application?
If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.
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When adding a new inventor to a patent application, additional documentation is required. According to 37 CFR 1.48(b):
An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
This means that any newly added inventor must submit either an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64. The specific requirements for these documents depend on the application’s filing date. For applications filed on or after September 16, 2012, refer to MPEP § 602.01(a) for oath or declaration requirements and MPEP § 604 for substitute statement requirements.
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Yes, it is possible to file a delayed benefit claim in an abandoned application, particularly for provisional applications. The MPEP 211.04 states:
“Effective December 18, 2013, 35 U.S.C. 119(e)(1) no longer requires that the amendment containing the specific reference to the earlier filed provisional application be submitted during the pendency of the application. Therefore, a petition to revive is no longer required to add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned nonprovisional application filed on or after November 29, 2000.”
This means you can file a petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed provisional application in the abandoned nonprovisional application. This may be necessary to correct benefit claims in later-filed applications that claim benefit from the abandoned application.
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Under AIA 35 U.S.C. 102(a)(1), secret commercial use or sale can still qualify as prior art, similar to pre-AIA law. The Supreme Court clarified this in the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case.
As stated in the MPEP:
“In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court ‘determine[d] that Congress did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).’”
This means that:
- A sale or offer for sale that does not publicly disclose the invention can still be prior art
- Confidential sales or commercial uses can potentially bar patentability
- The interpretation is consistent for both AIA and pre-AIA applications
Inventors and businesses should be aware that secret commercial activities could impact patent rights, even if the invention itself is not publicly disclosed.
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The assignment of a priority right can significantly impact patent applications. According to MPEP 216:
‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’
Key points about the assignment of priority rights:
- Priority rights can be transferred separately from the application itself.
- The assignment must be executed before filing the later application claiming priority.
- An assignment of the entire right, title, and interest in an application includes the right of priority.
- Partial assignments of priority rights are possible but must be clearly documented.
Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.
For more information on effective filing date, visit: effective filing date.
The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
An Information Disclosure Statement (IDS) is a formal document submitted to the USPTO during patent prosecution to disclose relevant prior art or other material information. According to 37 CFR 1.97, as referenced in the MPEP, The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered.
The IDS is a crucial part of fulfilling the duty of disclosure to the USPTO, ensuring that the patent examiner has all relevant information when considering the patentability of an invention.
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Antecedent basis in patent claims refers to the presence of support for claim terms in the specification. It is important because it ensures clarity and consistency between the claims and the specification. MPEP 608.01(o) states:
This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Proper antecedent basis helps prevent ambiguity in claim interpretation and strengthens the overall patent application. If the examiner finds that claims lack proper antecedent basis, they may object to the specification using form paragraph 7.44.
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Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
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Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
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Recording a patent assignment with the USPTO is crucial for several reasons:
- Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
- Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
- Chain of Title: It helps maintain a clear chain of title for the patent or application.
- Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.
The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.
There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:
- Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
- Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
- Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.
It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.
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What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
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To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:
“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]. The inventorship has been corrected as requested.”
It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent procedure, visit: patent procedure.
If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:
“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”
This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.
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Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
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- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
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The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):
“When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.”
This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.
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The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states:
A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may prevent applicant from obtaining a patent.
(MPEP 2133.03(b))
However, there is an exception for patented methods that are kept secret and remain secret after a sale of the unpatented product of the method. In such cases, a sale by a third party does not trigger the on-sale bar, but a sale by the patentee or patent applicant would.
This interpretation highlights the importance of maintaining control over the invention and being cautious about disclosing it to third parties before filing a patent application, as even unknowing sales by others could potentially bar patentability.
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When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
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If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:
- For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
- For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)
The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”
The petition must include:
- The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
- A petition fee under 37 CFR 1.17(m)
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional
The Director may require additional information if there’s a question about whether the delay was unintentional.
For more information on 37 CFR 1.78, visit: 37 CFR 1.78.
For more information on petition fee, visit: petition fee.
For more information on unintentional delay, visit: unintentional delay.
The best mode requirement is one of the three requirements for a patent specification under 35 U.S.C. 112(a). It requires that the inventor disclose the best way of carrying out the invention that they know of at the time of filing the patent application.
The MPEP states:
“[The specification] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
It’s important to note that the best mode requirement is separate and distinct from the enablement requirement. As mentioned in the MPEP, citing In re Newton: “Best mode is a separate and distinct requirement from the enablement requirement.”
The purpose of the best mode requirement is to prevent inventors from concealing the best way of practicing their invention while still obtaining patent protection for it. This ensures that the public receives the full benefit of the invention in exchange for the patent grant.
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How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
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The timing requirements for submitting an IDS are:
- Within 3 months of filing or before first Office action, whichever is later
- Before final Office action, Notice of Allowance, or Quayle action
- After final Office action but before issue fee payment
- After issue fee payment but before patent grant
The specific requirements vary based on when the IDS is filed. For example, as stated in MPEP 609.04(b): “An information disclosure statement will be considered by the examiner if filed within any one of the following time periods: (A) for national applications (not including CPAs), within three months of the filing date of the national application or before the mailing date of a first Office action on the merits; (B) for international applications, within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 or before the mailing date of a first Office action on the merits; (C) for RCEs and CPAs, before the mailing date of a first Office action on the merits; or (D) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later.”
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Yes, an application data sheet (ADS) can be used to correct certain information in a patent application. According to MPEP 603, deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76.
For example, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76.
However, it’s important to note that not all corrections can be made with an ADS. Specifically, any correction of inventorship must be pursuant to 37 CFR 1.48.
This means that inventorship changes require a separate process and cannot be corrected solely through an ADS.
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When responding to an objection regarding unlabeled prior art figures, applicants must follow specific procedures for submitting corrected drawings. According to MPEP 608.02(g), the process involves:
- Submitting corrected drawings in compliance with 37 CFR 1.121(d).
- Labeling the replacement sheet(s) as ‘Replacement Sheet’ in the page header, as per 37 CFR 1.84(c).
- Ensuring that the labeling does not obstruct any portion of the drawing figures.
- Designating the prior art figure with a legend such as ‘Prior Art’.
The MPEP states: Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled ‘Replacement Sheet’ in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures.
It’s crucial to follow these instructions carefully to ensure that the objection is resolved and to avoid further complications in the patent prosecution process.
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Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03:
“There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references.”
However, it’s important to note that if the applicant wants these references to be printed on the face of the resulting patent, they must provide a separate listing, preferably on a PTO/SB/08 form, within the set period for reply to the Office action or within one month of the mailing date of the Notice of Allowability.
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A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ¶ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken:
The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of the regulatory review period.”
This means that:
- The USPTO will not proceed with requesting a determination of the regulatory review period from the relevant agency.
- The patent term extension application will be dismissed.
- The applicant will be notified of the dismissal and the reasons for ineligibility.
This approach allows the USPTO to conserve resources and avoid unnecessary steps in cases where a patent does not meet the basic eligibility criteria for term extension.
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The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):
In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.
It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.
When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:
- A clear statement requesting the deletion of the inventor(s)
- The name(s) of the inventor(s) to be deleted
- The filing date of the CPA
The MPEP provides a template for acknowledging such requests:
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].
In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:
“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
Similarly, for domestic priority under 35 U.S.C. 120:
“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”
In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.
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‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
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When correcting inventorship after an Office action on the merits has been given or mailed in the application, there are additional requirements:
- Pay the fee set forth in 37 CFR 1.17(d) in addition to the processing fee
- This additional fee is not required if inventors are being deleted due to claim cancellation
The MPEP states: 37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
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Can a power of attorney be filed after the patent application is submitted to the USPTO?
Yes, a power of attorney can be filed after the patent application is submitted to the USPTO. The MPEP 601.02 states:
“A power of attorney may be filed in a provisional application, a nonprovisional application, a reexamination proceeding, or a supplemental examination proceeding.”
This means that you can file a power of attorney at various stages of the patent process, including:
- At the time of filing the application
- After the application has been submitted
- During prosecution of the application
- Even after the patent has been granted (for reexamination or supplemental examination proceedings)
However, it’s generally advisable to file the power of attorney as early as possible to ensure smooth communication with the USPTO throughout the application process. If you need to file a power of attorney after submission, use the appropriate USPTO form and follow the current filing procedures.
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Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:
- Make remarks of record in the new application referring to the affidavit or declaration.
- Include a copy of the original affidavit or declaration filed in the prior application.
The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.
It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
35 U.S.C. 102(a)(2) applies to certain patent documents as prior art. The MPEP states:
“U.S. patents, U.S. patent applications published under 35 U.S.C. 122(b), and international patent applications published under the Patent Cooperation Treaty to another are prior art under 35 U.S.C. 102(a)(2) if the effectively filed date of the disclosure of the reference is before the effective filing date of the claimed invention.”
Key points to understand:
- The reference’s effectively filed date must be before the claimed invention’s effective filing date
- The reference can be prior art even if its publication date is after the claimed invention’s effective filing date
- 35 U.S.C. 102(d) determines when subject matter in these documents was “effectively filed”
Exceptions to 102(a)(2) prior art are provided in 35 U.S.C. 102(b)(2), including disclosures of the inventor’s own work and common ownership scenarios.
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What is the difference between a general power of attorney and a limited power of attorney in patent applications?
In patent applications, there are two main types of power of attorney: general and limited. The MPEP 601.02 distinguishes between these as follows:
“A power of attorney may be in the form of a general power of attorney, e.g., to represent the client in all matters before the Office, or limited, e.g., to represent the client in a particular application or in a particular aspect of an application.”
Key differences include:
- General Power of Attorney: Grants broad authority to represent the client in all matters before the USPTO
- Limited Power of Attorney: Restricts the attorney’s authority to specific applications or aspects of an application
When deciding between the two, consider the scope of representation needed and any potential conflicts of interest. A limited power of attorney can be useful when working with multiple attorneys or when you want to maintain control over certain aspects of your patent portfolio.
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Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
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When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.
However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.
When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:
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]. The inventorship has been corrected as requested.
This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on inventorship, visit: inventorship.
For more information on patent procedure, visit: patent procedure.
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
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]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
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When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
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The phrase “in this country” in pre-AIA 35 U.S.C. 102(b) refers specifically to the United States and its territories. According to the MPEP:
“The language ‘in this country’ in pre-AIA 35 U.S.C. 102(b) does not include other WTO or NAFTA member countries, but includes any State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.”
This definition is important for determining the applicability of the public use and on-sale bars in patent law.
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When submitting a “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), applicants are required to pay a late furnishing fee. According to MPEP 2414.05:
“In response to such a requirement, the late furnishing fee set forth in § 1.445(a)(5) is also required.”
This fee is in addition to the submission of the “Sequence Listing XML” and a statement that the information does not go beyond the original disclosure. The specific amount of the fee can be found in 37 CFR 1.445(a)(5) and is subject to change, so applicants should consult the current fee schedule on the USPTO website.
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According to the MPEP, amino acid sequences must be set forth separately under certain conditions. Specifically:
“When the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).”
This means that if the amino acid sequence derived from the coding regions meets the minimum length requirements specified in 37 CFR 1.821(a), it must be presented as a separate sequence in the patent application, in addition to being depicted below the corresponding codons.
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To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:
- The application must be a design application.
- The prior application must be a nonprovisional application.
- The application must be filed before the earliest of:
- Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
- Abandonment of the prior application; or
- Termination of proceedings on the prior application.
As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”
For more information on continuation application, visit: continuation application.
For more information on CPA, visit: CPA.
For more information on Divisional application, visit: Divisional application.
For more information on filing requirements, visit: filing requirements.
If a patent application is in condition for allowance except for a required deposit, the USPTO may notify the applicant and set a three-month period for making the deposit. As stated in MPEP 2411.03:
“[T]he Office may notify the applicant in a notice of allowability and set a three month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment.”
This period is not extendable under 37 CFR 1.136. Failure to make the deposit within this timeframe may result in abandonment of the application.
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MPEP 606 provides guidance on words that should be avoided in patent application titles:
“The words listed below are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.”
While the MPEP doesn’t provide an exhaustive list in this section, it’s generally advisable to avoid:
- Non-descriptive terms like ‘new’, ‘improved’, or ‘invention of’
- Articles such as ‘a’, ‘an’, or ‘the’ at the beginning of the title
- Overly broad terms that don’t specifically describe the invention
However, there are exceptions. For example, “The term ‘new’ will not be deleted when it is a part of a proper name, such as ‘New York’. Similarly, the term ‘design’ will not be deleted when it is a part of a term, such as ‘Design-aiding apparatus…’.”
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The requirements for providing an inventor’s name in a patent application have evolved:
- For applications filed on or after September 16, 2012: 37 CFR 1.63 requires the inventor to be identified by their legal name.
- For applications filed before September 16, 2012: The full name was required, including family name and at least one given name without abbreviation.
The MPEP clarifies: “For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name.”
If an inventor’s full given name is a singular letter or letters (e.g., “J. Doe” or “J.P. Doe”), this should be explained in the oath or declaration to avoid objections.
For name corrections or changes after filing, a request under 37 CFR 1.48(f) is required, which includes submitting an application data sheet and a processing fee.
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Can an examiner request copies of cited NPL documents not submitted with an IDS?
Yes, an examiner can request copies of cited Non-Patent Literature (NPL) documents that were not submitted with an Information Disclosure Statement (IDS) under certain circumstances:
- If the NPL citation is incomplete or illegible, the examiner may request a legible copy.
- If the NPL document is not readily available to the examiner, they may request a copy from the applicant.
- The examiner should only request copies of documents that seem particularly relevant to the claimed invention.
According to MPEP 609.05(c): “The examiner may request copies of only those documents cited in the information disclosure statement that are not present in the Office’s files if the examiner believes the documents to be readily available.”
However, it’s important to note that: “The Office should not require copies of U.S. patents and U.S. patent application publications cited in an IDS, unless required by the first sentence of 37 CFR 1.98(d).”
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The inventor’s citizenship is an important piece of information in a patent application for several reasons:
- Compliance with USPTO requirements
- Determination of inventorship rights
- Application of international treaties
- Export control considerations
MPEP 602.08(a) states: ‘Citizenship is required to support an oath or declaration under 37 CFR 1.63 or to determine whether the application is subject to a secrecy order under 37 CFR 5.1(b).’
The citizenship information helps the USPTO ensure compliance with various legal requirements and international agreements, such as the Paris Convention for the Protection of Industrial Property.
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What are the consequences of failing to submit an Information Disclosure Statement (IDS)?
Failing to submit an Information Disclosure Statement (IDS) can have serious consequences for patent applicants. According to MPEP 609:
“The failure to timely file an Information Disclosure Statement may result in the application being abandoned or may adversely affect the validity of the patent.”
Specifically:
- The application may be abandoned if the IDS is not filed within the time periods specified in 37 CFR 1.97.
- If a patent is granted, it may be invalidated if it’s later discovered that material information was intentionally withheld from the USPTO during prosecution.
- The applicant may be accused of inequitable conduct, which can render the entire patent unenforceable.
It’s crucial for applicants to diligently submit all known material information to the USPTO through proper IDS filings to avoid these potential issues.
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The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
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What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains:
“[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.”
This means that even if an invention is used secretly, if it’s being commercially exploited, it may still be considered a public use. However, the mere fact that an invention is used internally by the inventor or their company to develop future products that are never sold is not sufficient by itself to create a public use bar.
It’s important to note that “public” is not necessarily synonymous with “non-secret.” The determination of whether a use is public depends on various factors, including the nature of the activity, public access, confidentiality obligations, and commercial exploitation.
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Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
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In patent law, machines and manufactures are two distinct categories of statutory subject matter. The MPEP provides definitions for both:
Machine: “A machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This category ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’“
Manufacture: “A manufacture is ‘a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.’ … manufactures are articles that result from the process of manufacturing, i.e., they were produced ‘from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’“
The key difference is that a machine is typically a device with moving parts or circuitry that performs a function, while a manufacture is a tangible article that has been produced or modified by human intervention. Both categories require physical or tangible form.
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An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
- Formal abandonment by the applicant or their attorney/agent
- Failure to take appropriate action during prosecution
- Failure to pay the issue fee
- For provisional applications, not filing a nonprovisional application within 12 months
Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.
For more information on patent abandonment, visit: patent abandonment.
In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04:
“‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same.”
This means that even if an application and a reference have one or more inventors in common, the reference can still be considered “by another” if the inventive entities are not identical.
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The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:
The filing date of a continuation application is the filing date of the parent application.
However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:
- The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
- For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
- Each continuation in a chain reduces the effective patent term.
It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.
For more information on continuation application, visit: continuation application.
For more information on patent priority, visit: patent priority.
For more information on patent term, visit: patent term.
An improper Markush grouping rejection can be addressed in several ways:
- Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use.
- Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use.
- Show that the alternatives are all members of the same recognized physical, chemical, or art-recognized class that share a common use.
- Demonstrate that the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
The MPEP states: To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
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If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
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The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
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A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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For an Information Disclosure Statement (IDS) filed after a final Office action, Notice of Allowance, or an Ex parte Quayle action, but before or with payment of the issue fee, the following is required:
- A statement under 37 CFR 1.97(e), and
- The fee set forth in 37 CFR 1.17(p)
According to MPEP 609.04(b): An information disclosure statement will be considered by the examiner if filed on or after the mailing date of any of the following: a final action under 37 CFR 1.113; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, but before or simultaneous with payment of the issue fee, provided the statement is accompanied by: (A) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V; and (B) the fee set forth in 37 CFR 1.17(p).
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The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A juristic entity (e.g., corporations, universities, or other organizations) can give power of attorney in a patent application through an appropriate official. According to MPEP 402:
‘Where the applicant is a juristic entity (e.g., organizational assignee), a power of attorney must be signed by a person authorized to act on behalf of the applicant.’
The process typically involves:
- An official with signing authority (e.g., CEO, president, or authorized patent counsel) signs the power of attorney form.
- The signed form is submitted to the USPTO along with the patent application or separately if done after filing.
- If requested by the USPTO, documentation may need to be provided to establish the authority of the person signing on behalf of the juristic entity.
It’s important to ensure that the person signing has the actual authority to bind the juristic entity in patent matters.
For more information on juristic entity, visit: juristic entity.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
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What is the significance of a power of attorney in patent applications?
A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.
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Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is that a continuation application is based on a prior nonprovisional application, while a provisional application is a standalone filing that can later be used as a priority document.
The MPEP specifically notes:
“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application.”
This guidance also applies to continuation applications. Provisional applications serve as temporary placeholders and do not undergo examination, while continuation applications are fully examined and build upon previously filed nonprovisional applications.
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While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections:
- On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.
- Public Use: Involves the invention being used in a way that makes it accessible to the public, even if not commercially.
Key differences include:
- Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
- Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
- Purpose: ‘On sale’ focuses on commercial exploitation, while ‘public use’ is more about the invention being accessible or observable by the public.
Both ‘on sale’ and ‘public use’ can trigger statutory bars to patentability, so inventors should be cautious about any activities that might fall into either category before filing a patent application.
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Listing references in the specification instead of submitting them in a proper Information Disclosure Statement (IDS) can have significant consequences. The MPEP 609.05(a) addresses this issue with form paragraph 6.49.06:
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP § 609.04(a), subsection I. states, ‘the list may not be incorporated into the specification but must be submitted in a separate paper.’ Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
This means that references listed in the specification:
- Are not considered a proper IDS
- Will not be considered by the examiner unless cited on form PTO-892
- Must be submitted separately in a proper IDS to ensure consideration
To ensure all relevant prior art is considered, applicants should always submit references in a separate, properly formatted IDS rather than listing them in the specification.
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The AIA provides specific guidance for determining the effective filing date of claimed inventions in reissue applications:
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
This means:
- The effective filing date for a claimed invention in a reissue application is treated as if the claim was part of the original patent being reissued.
- This applies even if the claim is new or modified in the reissue application.
- The purpose is to maintain continuity with the original patent and prevent the introduction of intervening prior art solely due to the reissue process.
It’s important to note that while this provision helps determine the effective filing date, reissue applications must still comply with other statutory requirements, including those related to broadening reissues and the two-year filing deadline for broadening reissues.
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What happens if a continuation application is filed after the parent application has been abandoned?
If a continuation application is filed after the parent application has been abandoned, it may still be entitled to the benefit of the filing date of the prior application. The MPEP states:
“Where the prior application has been abandoned, the petition to revive under 37 CFR 1.137 (a) or (b) must be filed in the prior application, or in a subsequent nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior application, if the prior nonprovisional application is not pending and claims the benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) of a provisional application.”
This means that even if the parent application is abandoned, you can still file a continuation application and potentially revive the parent application. However, specific procedures must be followed, including filing a petition to revive in the appropriate application.
For more information on reviving abandoned applications, refer to MPEP 711.
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Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?
Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:
- The practitioner must submit a request to withdraw.
- The request must comply with 37 CFR 1.36.
- The USPTO must approve the withdrawal.
According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”
It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.
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No, you cannot get your patent application drawings returned. The United States Patent and Trademark Office (USPTO) clearly states in the Manual of Patent Examining Procedure (MPEP) Section 608.02(y) that:
Drawings will not be returned to the applicant.
This policy ensures that the USPTO maintains a complete record of all submitted materials for each patent application. It’s important for applicants to keep copies of all documents, including drawings, submitted to the USPTO.
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Yes, you can request the return of your model, exhibit, or specimen from the USPTO. However, there are specific procedures and timeframes to follow. According to MPEP 608.03(a):
A request for return of the model, exhibit, or specimen should be made within the period set forth in MPEP § 608.03(a).
Here are the key points to remember:
- Make the request before the application is allowed or within two months after the date of the Notice of Allowance.
- Include a proper postage paid return address sticker with the request.
- If the item is not claimed within the specified period, the USPTO may dispose of it at its discretion.
It’s important to act promptly if you wish to have your items returned, as the USPTO is not obligated to store them indefinitely.
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The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
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When a Secrecy Order case is in condition for allowance, the prosecution is closed, but the patent is not issued. According to the MPEP, When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution.
This is in accordance with 37 CFR 5.3(c). The application remains in this state until the Secrecy Order is rescinded.
For more information on notice of allowability, visit: notice of allowability.
The purpose of an abstract in a patent application is to provide a concise summary that allows readers to quickly determine the nature and gist of the technical disclosure. According to MPEP 608.01(b):
The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims.
This summary helps examiners, researchers, and other readers to quickly assess the relevance of the patent application to their interests.
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Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:
1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.
2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.
The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”
For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.
There are two main ways to obtain a receipt for items filed with the USPTO:
- For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
- For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.
The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)
Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:
- A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
- No additional amendment to the specification or application data sheet is required to claim benefit
- A CPA is considered to reference every application in the chain with the same application number
- Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA
The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).
For more information on benefit claims, visit: benefit claims.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on patent applications, visit: patent applications.
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies:
“Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”
When submitting documents as evidence, applicants don’t need to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98. However, if the same documents are also listed on an IDS form (e.g., PTO/SB/08), the applicant must comply with IDS rules for those documents to be considered as part of the IDS.
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No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:
To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.
This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.
Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.
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For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:
“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”
This means that when making a benefit claim, you must explicitly state whether the current application is a:
- Continuation
- Divisional
- Continuation-in-part
of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.
Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.
For more information on divisional, visit: divisional.
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806:
- Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing.
- For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
- Include the control number assigned to the reexamination proceeding.
- Clearly mark all papers with “EX PARTE REEXAMINATION” to ensure proper routing.
The MPEP states: “Any paper filed in an ex parte reexamination proceeding resulting from a supplemental examination proceeding should be filed as provided in 37 CFR 1.1(c).” This ensures that your documents are properly processed and routed within the USPTO.
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The Federal Register Notice sets two important deadlines:
- A deadline 180 days after publication for filing written comments or petitions regarding the marketing applicant’s due diligence during the regulatory review period.
- A deadline 60 days after publication for requesting redetermination if anyone believes the published dates are incorrect.
MPEP 2757 states: “The Federal Register Notice also sets a date, 180 days after publication of the notice, as a deadline for filing written comments concerning any of the information set forth in the notice or a petition for a determination regarding whether the marketing applicant has acted with due diligence during the regulatory review period. The Federal Register Notice also sets a date, which is 60 days after publication of the notice, for anyone with information that the published dates are incorrect to request redetermination.“
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The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v):
“In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus which will inherently carry out the recited steps.”
This case established that process claims should be evaluated on their own merits, regardless of whether a disclosed apparatus would inherently perform the claimed steps. This ruling protects inventors from having their process claims unfairly rejected based solely on the functionality of a related machine or apparatus.
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In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
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For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
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An attorney can withdraw from representation in a patent case by following these steps:
- File a request to withdraw in accordance with 37 CFR 1.36.
- The request should include the correspondence address of the applicant or patent owner.
- If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
- The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.
As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“
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A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out:
- The prior art that adds new teaching to at least one claim
- What that new teaching is
- The claims the new teaching is directed to
- That the new teaching was not previously considered or addressed
- That the new teaching is important in deciding claim allowance
As stated in the MPEP, “The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply.”
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When submitting prior art with a patent protest, follow these guidelines:
- Include a copy of each prior art document relied upon.
- Provide an English language translation of any non-English language prior art.
- Highlight the relevant parts of the prior art documents.
According to MPEP 1901.03: “Copies of any prior art or other documents relied upon should be provided.” Additionally, the MPEP states: “A translation of the pertinent portions of any non-English language prior art should also be provided.” By following these guidelines, you ensure that the examiner can easily understand and consider the relevance of the submitted prior art to the patent application under protest.
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According to MPEP 2412.05(a), intentionally skipped sequences must be included in the “Sequence Listing XML” and represented as follows:
- Use the element SequenceData and its attribute sequenceIDNumber, providing the sequence identifier of the skipped sequence as the value.
- Include the elements INSDSeq_length, INSDSeq_moltype, and INSDSeq_division, but with no value provided.
- Do not include the element INSDSeq_feature-table.
- Use the element INSDSeq_sequence with the string “000” as the value.
The MPEP states: “Where no sequence is present for a sequence identifier, i.e. an intentionally skipped sequence, ‘000’ must be used in place of a sequence.” This ensures that the total number of sequences in the listing matches the total number of sequence identifiers, maintaining consistency and completeness in the documentation.
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The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
How can I revoke a power of attorney in a patent application filed on or after September 16, 2012?
To revoke a power of attorney in a patent application filed on or after September 16, 2012, you need to follow these steps:
- Submit a new power of attorney form (PTO/AIA/82) or a revocation form (PTO/AIA/83).
- The revocation must be signed by the applicant or patent owner.
- If using form PTO/AIA/82, check the box indicating revocation of all previous powers of attorney.
According to MPEP 402.02(a): “A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c).”
It’s important to note that the revocation is not retroactive; it only takes effect when received by the USPTO.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter:
“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’”
This means that while inherent properties or characteristics of an invention can contribute to satisfying the written description requirement, they must be necessarily present and recognizable to those skilled in the art based on the original disclosure. Applicants should be cautious about relying solely on inherency and should strive to provide explicit description whenever possible.
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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When canceling a figure in a patent application, the following procedure should be followed:
- Submit a replacement sheet of drawings without the canceled figure.
- If the canceled figure was the only drawing on the sheet, provide a marked-up copy of the drawing sheet with an annotation showing the cancellation.
- Label the marked-up copy as “Annotated Sheet”.
- Present the annotated sheet in the amendment or remarks section explaining the changes.
- Amend the brief description of the drawings to reflect the change.
This procedure is outlined in MPEP 608.02(t), which states: “If a drawing figure is canceled, a replacement sheet of drawings must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only drawing on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the drawing has been cancelled is required.”
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The 30-month period for national stage entry is calculated from the priority date of the international application. The priority date is typically the filing date of the earliest application whose priority is claimed in the international application.
MPEP 601.04 states: “For most applications, the 30-month time period for entry into the national stage expires on the same day of the month as the date of the priority claim in the 30th subsequent month.” However, it’s important to note that if the 30-month period expires on a Saturday, Sunday, or federal holiday, the period is extended to the next succeeding business day.
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To correct a typographical error in a patent assignment, you need to submit several documents. According to MPEP 323.01(b), the required documents include:
- A copy of the originally recorded papers
- A cover sheet
- The required fee for each application or patent to be corrected
If the assignor is not available to make the correction, the assignee must also provide:
- An affidavit or declaration identifying the error and requesting correction
The MPEP states:
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).
Ensure all documents are properly prepared and submitted to avoid delays in processing.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
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A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
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“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
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Judicial exceptions in patent law are categories of subject matter that the courts have found to be outside the four statutory categories of invention. The MPEP defines judicial exceptions as:
“abstract ideas, laws of nature and natural phenomena (including products of nature).”
These exceptions are not patentable on their own because they are considered the “basic tools of scientific and technological work.” However, applications of these exceptions may be eligible for patent protection if they meet certain criteria, such as integrating the exception into a practical application or including additional elements that amount to significantly more than the exception itself.
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For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
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How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- Wait for account approval and receive your account number
According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.
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The requirements for power of attorney in patent applications differ based on the filing date:
- For applications filed on or after September 16, 2012: Refer to MPEP § 402.02(a) for detailed information and relevant forms.
- For applications filed before September 16, 2012: Consult MPEP § 402.02(b) for specific details and applicable forms.
The MPEP 601.02 states: “See MPEP § 402.02(a) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed on or after September 16, 2012. See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.”
This distinction is important as it affects the specific procedures and forms required for appointing a power of attorney.
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What happens if an application data sheet (ADS) is not consistent with the information provided elsewhere in the application?
If there are inconsistencies between the ADS and other documents in the application, the ADS will generally control, except for the following situations:
- The ADS is inconsistent with the oath or declaration accompanying the application, and the oath or declaration is accompanied by a statement explaining the inconsistency. In this case, the oath or declaration will control.
- The ADS is inconsistent with information provided in the specification, in which case the information in the specification will control.
As stated in MPEP 601.05(b):
“If an ADS is inconsistent with the information provided elsewhere in the application, the ADS will control except for: (1) the naming of the inventors (37 CFR 1.41(a)(1) governs), and (2) the information that is contained in an oath or declaration accompanying the application (37 CFR 1.63 and 1.67 govern).”
It’s crucial to ensure consistency across all application documents to avoid potential confusion or delays in the examination process.
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New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
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The timeframe for receiving a Notice of Allowance (PTOL-85) after a Notice of Allowability (Form PTOL-37) is generally within three months. However, if you don’t receive the Notice of Allowance within this period, it may be appropriate to make a status inquiry.
The MPEP states: A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination.
(MPEP 203.08)
However, the MPEP also notes an exception: As an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.
If you haven’t received your Notice of Allowance after three months from receiving the Notice of Allowability, it’s advisable to check the status of your application through Patent Center or contact the Application Assistance Unit.
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When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:
“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.”
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
This ensures that the examiner can consider the previously submitted evidence in the context of the new application.
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:
Any request to add an inventor must be in the form of a request under 37 CFR 1.48.
To add a new inventor:
- File a request under 37 CFR 1.48 to correct the inventorship.
- Include a statement from the new inventor agreeing to the addition.
- Pay any required fees.
- Provide an oath or declaration from the new inventor.
Failure to follow these steps may result in the inventorship remaining the same as in the prior application.
For more information on CPA, visit: CPA.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
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Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
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After a final decision in an interference proceeding, the claims are handled as follows:
- Claims that were not involved in the interference remain pending in the application.
- Claims that were involved in the interference are disposed of according to the judgment.
- Claims that correspond to the count(s) of the interference are disposed of in accordance with the judgment.
As stated in MPEP 2308.01: “The claims of an application or patent which correspond to the count or counts of an interference will be disposed of in accordance with the judgment in the interference.”
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The MPEP clearly states that “The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’” This means that prior knowledge or use outside the United States, even if widespread in a foreign country, cannot be used as a basis for rejection under pre-AIA 35 U.S.C. 102(a).
The MPEP cites the case of In re Ekenstam to support this interpretation. It’s important to note that despite changes made to pre-AIA 35 U.S.C. 104 by NAFTA and the Uruguay Round Agreements Act, the phrase “in this country” in pre-AIA 35 U.S.C. 102(a) still refers only to the United States and does not include other WTO or NAFTA member countries.
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An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
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The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:
- Visit the USPTO Patent Assignment Search page
- Enter relevant information such as patent number, assignee name, or assignor name
- Review the search results for the desired assignment information
The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’
When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
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What is the difference between a principal and an associate power of attorney in patent applications?
In patent applications, there is a distinction between principal and associate powers of attorney:
- Principal Power of Attorney: This is the primary power of attorney granted by the applicant to a patent practitioner or firm.
- Associate Power of Attorney: This is a secondary power of attorney that can be granted by the principal attorney to another practitioner or firm.
According to MPEP 402.02(a):
“A principal attorney or agent may appoint an associate power of attorney to act in a representative capacity. See 37 CFR 1.32(b). An associate power of attorney is a power of attorney given to a second attorney or agent by an already appointed principal patent attorney or agent. The associate power of attorney is given by the principal attorney or agent to the associate attorney or agent, not by the applicant.”
It’s important to note that an associate power of attorney does not replace the principal power of attorney but rather supplements it, allowing for additional representation in the patent application process.
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Yes, the United States Patent and Trademark Office (USPTO) provides an official form for requesting correction of inventorship in a patent application (other than a reissue application). The details are as follows:
- Form number: PTO/AIA/40
- Purpose: To request correction relating to inventorship, an inventor name, or order of names
- Availability: The form can be found on the USPTO website at www.uspto.gov/PatentForms
The MPEP states: The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names. The form is reproduced below and is also available on www.uspto.gov/PatentForms.
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Yes, a person can sign patent documents on behalf of a juristic entity, but there are specific requirements:
According to MPEP 402.03: ‘Papers submitted on behalf of juristic entities must be signed by a person having authority to sign for the juristic entity.’
This means:
- The signer must have the legal authority to act on behalf of the entity.
- For corporations, this typically includes officers or agents appointed by the board.
- For partnerships, a partner may sign.
- For universities, an authorized official may sign.
It’s crucial to ensure the signer has proper authorization to avoid potential issues with the patent application.
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Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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According to MPEP 409.03(f), various forms of evidence can be submitted as proof of proprietary interest. The section states:
‘Sufficient proprietary interest is shown by an assignment or assignment of the invention to a person who is under an obligation of assignment to the applicant… Other examples of documents which may be submitted to establish proprietary interest are:
- (A) A legal memorandum which explains on the basis of the facts of the case that the person signing the 37 CFR 1.47 oath or declaration is a person who has sufficient proprietary interest in the matter;
- (B) A copy of the contract of employment or of any other contract between the inventor and assignee;
- (C) An affidavit or declaration of the specific facts which support the assignee’s claim of proprietary interest;
- (D) Other evidence which establishes the person’s authority to sign the 37 CFR 1.47 oath or declaration on behalf of and as agent for the inventor.’
These examples provide a range of documents that can be used to demonstrate proprietary interest when an inventor is unwilling or unable to execute the required oath or declaration.
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Are maintenance fees required for all types of patents?
No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:
“Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents.“
Here’s a breakdown of maintenance fee requirements by patent type:
- Utility patents: Subject to maintenance fees
- Design patents: Not subject to maintenance fees
- Plant patents (filed before June 8, 1995): Not subject to maintenance fees
- Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
- Reissue patents: Subject to maintenance fees if the original patent was subject to them
It’s crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.
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The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
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A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
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For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
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When revoking a power of attorney in a situation where there is no practitioner of record, special considerations apply. The MPEP 402.05 states:
‘If a power of attorney is revoked, and a new power of attorney is not promptly filed, then pursuant to 37 CFR 1.33(a) the correspondence address will be changed to that of the inventor(s) or assignee(s) who last provided a correspondence address.’
This means:
- The USPTO will change the correspondence address to that of the inventor(s) or assignee(s).
- The last provided correspondence address by the inventor(s) or assignee(s) will be used.
- All future communications from the USPTO will be sent to this address.
- It’s crucial to provide a new power of attorney or update the correspondence address promptly to ensure receipt of important communications.
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If examiners find that drawings are inconsistent with the specification in a patent application, they should:
- Identify the specific inconsistencies
- Object to the drawings and/or specification as appropriate
- Provide clear explanations of the inconsistencies in the Office action
- Require the applicant to correct the inconsistencies
MPEP 608.02(e) states: ‘The examiner should see to it that the drawings are correct, complete, and consistent with the specification and claims.’ This responsibility includes ensuring that the drawings accurately reflect the invention described in the specification and that there are no contradictions between the textual description and the visual representation.
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No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
Yes, a power of attorney can be revoked in a patent application. The process for revocation is outlined in MPEP 402:
‘The power of attorney may be revoked at any time. Pursuant to 37 CFR 1.36(a), an applicant may revoke a power of attorney by filing a new power of attorney that is not directed to the patent practitioner(s) of record.’
To revoke a power of attorney:
- File a new power of attorney form (PTO/AIA/82) with the USPTO.
- The new form should either name new representative(s) or indicate that the applicant wishes to prosecute the application pro se (without an attorney).
- Ensure the form is signed by the applicant or, in the case of a juristic entity, by an authorized official.
- Submit the form through the USPTO’s Electronic Filing System (EFS-Web) or by mail.
It’s important to note that merely filing a new power of attorney automatically revokes the previous one. There’s no need for a separate revocation document unless you want to revoke without appointing a new representative.
For more information on power of attorney, visit: power of attorney.
For more information on pro se, visit: pro se.
For more information on revocation, visit: revocation.
For more information on USPTO, visit: USPTO.
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
No, you do not need to submit copies of U.S. patents and patent application publications when filing an e-IDS. The MPEP 609.07 states:
Copies of U.S. patents and U.S. patent application publications cited in the IDS are not required to be submitted by the applicants with the e-IDS.
However, it’s important to note that for foreign patent documents, non-patent literature (NPLs), and unpublished U.S. patent applications not stored in the Office’s Image File Wrapper (IFW) system, you must submit PDF copies using EFS-Web.
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For patent application information not available through Public PAIR, you can submit a request to the USPTO under the Freedom of Information Act (FOIA). Here’s how to proceed:
- Submit a written request to the USPTO’s FOIA Officer.
- Clearly identify the records you’re seeking.
- Explain why you believe the information should be disclosed if it’s not typically available to the public.
- Be prepared to pay any applicable fees for search and duplication.
- Wait for the USPTO to process your request and respond, which may take several weeks.
Note that certain information may still be withheld if it falls under FOIA exemptions or is protected by other statutes.
The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.
The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:
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]. The inventorship has been corrected as requested.
In this acknowledgment:
- [1] refers to the name(s) of the inventor(s) requested to be deleted
- [2] indicates the filing date of the CPA
This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.
For more information on CPA, visit: CPA.
For more information on USPTO acknowledgment, visit: USPTO acknowledgment.
The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
- Hand-delivery to the USPTO office.
Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.
As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”
Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
- For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.
According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.
Important considerations:
- Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
- If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
- Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
- In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.
Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.
For more information on ADS, visit: ADS.
For more information on CPA, visit: CPA.
For more information on prior art, visit: prior art.
No, extensions of time are not permitted for submitting corrected drawings in response to a notice of allowability. The MPEP clearly states:
Extensions of time to provide acceptable drawings in response to a notice of allowability are not permitted.
This strict policy ensures that the patent granting process is not unnecessarily delayed and encourages applicants to submit corrected drawings promptly after receiving the notice of allowability.
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How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
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An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
A secrecy order can remain in effect for a significant period. As stated in MPEP 120, “The secrecy order may remain in effect for the duration of the national emergency and six months thereafter and automatically expires at the end of that period.” However, it’s important to note that:
- The order can be renewed if necessary
- It can be terminated earlier if the reasons for its issuance no longer exist
- The total duration is subject to the provisions of 35 U.S.C. 181
For more information on secrecy order duration, visit: secrecy order duration.
If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
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Errors in citation numbers for U.S. patents or patent application publications in an e-IDS can be problematic because examiners rely on these numbers to retrieve and review the documents electronically. The MPEP 609.07 addresses this issue:
The only mechanism for having the correct document reviewed and considered when an erroneous U.S. patent or U.S. patent application publication is cited in an e-IDS will be by citing the correct citation number in a subsequent IDS that conforms to the requirements of 37 CFR 1.97 and 1.98.
This means that if you discover an error in a citation number after submitting an e-IDS, you must file a new IDS with the correct citation number to ensure the proper document is considered. It’s crucial to double-check all citation numbers before submitting an e-IDS to avoid such issues.
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What types of documents can be recorded as assignments with the USPTO?
The USPTO allows for the recording of various types of documents related to patent ownership. According to MPEP 302:
“The United States Patent and Trademark Office (USPTO) records assignments, grants, and similar instruments relating to interests in patents and applications as provided in 37 CFR Part 3.”
Types of documents that can be recorded include:
- Assignments: Transfers of the entire right, title, and interest in a patent or application
- Security Agreements: Documents creating a security interest in a patent or application
- Licenses: Agreements granting rights to use or practice a patented invention
- Releases: Documents releasing previous security interests or other encumbrances
- Name Changes: Documents evidencing a change in the name of the owner of record
- Mergers: Documents showing the merger of companies and the resulting transfer of patent rights
It’s important to note that the USPTO records these documents without making a determination of their validity. As stated in MPEP 302, “The recording of a document pursuant to 37 CFR 3.11 is not a determination by the USPTO of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
For more information on patent assignments, visit: patent assignments.
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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The category of abstract ideas “having no particular concrete or tangible form” is a catch-all category for abstract ideas that don’t fit neatly into the other three categories (mathematical concepts, certain methods of organizing human activity, and mental processes) as described in MPEP 2106.04(a). While the MPEP doesn’t provide an exhaustive list, it does offer some examples:
- An idea ‘of itself’: This includes ideas standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.”
- Certain arrangements of printed matter: For example, a set of dice with printed matter on the faces.
- Data recognition and storage: As exemplified in Content Extraction and Transmission LLC v. Wells Fargo Bank.
The MPEP states: “The courts have declined to define abstract ideas, other than by example, so the above-identified concepts should be understood as examples and not as a definitive or exhaustive listing.“
It’s important to note that this category is flexible and can accommodate new types of abstract ideas as they are identified by the courts. When evaluating a claim for patent eligibility, examiners are instructed to consider whether the claim recites an abstract idea, regardless of whether it fits neatly into one of the enumerated categories.
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When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
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The case of In re Kelly is significant in understanding the approach to double inclusion in patent claims. The MPEP 2173.05(o) cites this case to emphasize that there is no absolute rule against double inclusion. The MPEP quotes In re Kelly as follows:
“Automatic reliance upon a ‘rule against double inclusion’ will lead to as many unreasonable interpretations as will automatic reliance upon a ‘rule allowing double inclusion’. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.”
This statement from In re Kelly underscores the importance of evaluating each instance of double inclusion based on its specific context and the reasonable interpretation of the claim language, rather than applying a blanket rule for or against double inclusion.
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The In re Elsner case, as discussed in MPEP 2121.03, is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states:
“The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar.”
This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant.
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Glossaries play a crucial role in ensuring adequate definition of claim terms in patent applications. The MPEP 2173.03 specifically mentions the importance of glossaries:
“Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims.”
Glossaries serve several important functions:
- They provide clear definitions for claim terms
- They help establish antecedent basis in the specification
- They assist examiners and the public in understanding the claimed invention
- They can help prevent rejections based on indefiniteness
By including a glossary in the specification, inventors can proactively define their terms, reducing the likelihood of misinterpretation or disputes over claim scope during examination or potential litigation.
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According to MPEP 2304.01(d), finally refused or canceled claims are generally excluded from an interference proceeding. The MPEP states:
“Claims which have been finally refused or canceled are generally excluded from the interference.”
This treatment of finally refused or canceled claims serves several purposes:
- It streamlines the interference process by focusing on active, potentially patentable claims.
- It prevents the reintroduction of claims that have already been determined to be unpatentable.
- It helps maintain the efficiency and clarity of the interference proceeding.
However, it’s important to note that the word “generally” in the MPEP indicates that there might be rare exceptions to this rule, which would be determined by the administrative patent judge (APJ) based on the specific circumstances of the case.
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A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
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If a request for supplemental examination fails to comply with 37 CFR 1.610, the following process occurs:
- The Office will notify the patent owner of any defects in the request.
- The patent owner is given a non-extendable period of 30 days to correct the defects.
- If the defects are not corrected within the 30-day period, the request will not be granted a filing date and will not be entitled to a refund of the fee for reexamination.
As stated in the MPEP 2812: “If the request fails to comply with any of the requirements of 37 CFR 1.610, the patent owner will be given a single opportunity to correct the defects in the request.”
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
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A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
If a patent application fails to set forth any mode of the invention, it is considered a failure of enablement, not a best mode violation. According to MPEP 2165.02:
“The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement.”
This means that if an application doesn’t describe any way to make and use the invention, it fails the enablement requirement. The best mode requirement only comes into play when at least one mode is disclosed, but not necessarily the best one known to the inventor.
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Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
How can I correct information in an Application Data Sheet (ADS) after submission?
To correct information in an Application Data Sheet (ADS) after submission, you must follow specific procedures outlined in the MPEP:
“If an ADS has been previously submitted, the ADS provided with a continuing application, reissue application, or reexamination proceeding should be marked to show the changes from the previously submitted ADS.” (MPEP 601.05(a))
Here’s how to make corrections:
- Submit a new ADS with clearly marked changes.
- Use strikethrough for deletions and underlining for insertions.
- Include all sections of the ADS, not just those being changed.
- For inventor information changes, comply with 37 CFR 1.48.
- For benefit claims corrections, see 37 CFR 1.78.
Remember, some changes may require additional forms or fees. Always check the current USPTO guidelines for the most up-to-date requirements.
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“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
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Using a trademark as a generic term in a patent claim can have significant negative consequences:
- It may render the claim indefinite under 35 U.S.C. 112(b).
- It constitutes improper use of the trademark.
- It can potentially lead to the loss of trademark rights.
The MPEP 2173.05(u) states:
“In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”
This guidance emphasizes the importance of avoiding the use of trademarks as generic terms in patent claims to maintain both claim clarity and trademark protection.
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The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The transitional phrase “comprising” in a patent claim is inclusive and open-ended. According to the MPEP, The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
This means that a claim using “comprising” allows for the inclusion of additional elements or steps beyond those explicitly stated in the claim. For example, a claim for a device “comprising A, B, and C” would cover devices that include A, B, and C, as well as devices that include A, B, C, and additional elements.
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The main difference between 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the types of prior art they cover:
- 35 U.S.C. 102(a)(1) covers public disclosures, including patents, printed publications, public use, sales, or other public availability of the claimed invention before the effective filing date.
- 35 U.S.C. 102(a)(2) specifically covers U.S. patents, U.S. patent application publications, and international patent applications published under the Patent Cooperation Treaty, which have an effectively filed date before the effective filing date of the claimed invention.
As stated in the MPEP, “First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(a)(1). Next the examiner must determine if any exceptions in 35 U.S.C. 102(b)(1) apply.” The same process is then applied for 102(a)(2) and its exceptions under 102(b)(2).
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The principle of claim differentiation is an important tool in claim interpretation. According to the MPEP:
This principle is based on the assumption that each claim in a patent has a different scope. Therefore:
- If a dependent claim includes a specific limitation, it’s presumed that the independent claim it depends from does not include that limitation.
- This presumption can be used to interpret the broader scope of the independent claim.
However, it’s important to note that this is a rebuttable presumption. The MPEP clarifies:
“This presumption is rebuttable if other evidence in the specification or prosecution history clearly indicates that the claims should be interpreted differently.”
Examiners and courts use this principle as one of several tools to understand the intended scope of patent claims.
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A Notice of Omitted Items is an official communication from the USPTO regarding missing elements in a patent application. As described in MPEP 601.01(f):
“If drawings are omitted in an application filed under 35 U.S.C. 111(a) on or after December 18, 2013, but the application contains something that can be construed as a written description, at least one drawing, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, the Office will not deny a filing date.”
In such cases, the USPTO will issue a Notice of Omitted Items, informing the applicant of the missing drawings and providing a two-month period to submit them. This notice is crucial as it sets the deadline for completing the application and avoiding abandonment.
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A substitute specification must be submitted with specific formatting requirements as outlined in 37 CFR 1.125(c):
- A clean version (without markings) must be provided.
- A marked-up copy showing all changes relative to the prior version must be submitted.
- Added text must be shown by underlining.
- Deleted text must be shown by strike-through or double brackets (for five or fewer consecutive characters).
The MPEP further states: “The paragraphs of any substitute specification, other than the claims, should be individually numbered in Arabic numerals (for example [0001]) so that any amendment to the specification may be made by replacement paragraph in accordance with 37 CFR 1.121(b)(1).”
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No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
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When a new power of attorney is filed, it generally revokes all prior powers of attorney. MPEP 402.05(a) provides several scenarios:
- If a new power of attorney is filed without explicitly revoking prior ones, it will be treated as a revocation of the original power of attorney.
- If an assignee files a new power of attorney, it revokes and replaces the original power of attorney filed by the applicant.
- If a power of attorney is given to practitioners associated with a Customer Number, and a second power of attorney is later received for a different Customer Number, the second one will replace the first.
The MPEP states:
In all of these situations, the most recently filed power of attorney will control.
This means that the latest power of attorney filed will take precedence over any previously filed ones.
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What is the significance of the application filing date for new matter in patent applications?
The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:
‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’
This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.
The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.
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According to the MPEP 602.06, if an inventor understands English, it is preferable to use English for oaths and declarations. The manual states:
“If the individual comprehends the English language, he or she should preferably use it.”
This preference for English, when possible, likely helps streamline the patent application process and reduces the need for translations. However, it’s important to note that the primary requirement is for the inventor to understand the language used, whether it’s English or another language.
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Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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Can drawings or figures in a patent application introduce new matter?
Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue:
‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.’
This implies that:
- Original drawings are part of the disclosure and can support claims.
- However, new or amended drawings can potentially introduce new matter.
- Changes to drawings that go beyond what was originally disclosed may be rejected as new matter.
For example, adding specific structural details to a figure that weren’t originally disclosed, or introducing new relationships between components, could be considered new matter. Applicants should be cautious when modifying drawings and ensure any changes are fully supported by the original disclosure.
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No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
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Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application.
To rely on an earlier-filed affidavit or declaration, the applicant must:
- Make remarks of record in the new application
- Include a copy of the original affidavit or declaration filed in the prior application
For more information on patent prosecution, visit: patent prosecution.
For more information on prior applications, visit: prior applications.
Filing a new power of attorney typically revokes all prior powers of attorney. According to MPEP 402.05: When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.
This means that the most recently filed power of attorney will control.
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According to MPEP 203.05, you have 12 months from the filing date of your provisional application to file a nonprovisional application. The MPEP states:
“in the case of a provisional application, no later than 12 months after the filing date of the provisional application”
If you don’t file a nonprovisional application within this timeframe, your provisional application will be considered abandoned. This 12-month period is set by 35 U.S.C. 111(b)(5).
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What are the requirements for submitting photographs as drawings in a patent application?
Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:
“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”
To submit photographs as drawings:
- Ensure they are the only practicable medium for illustrating the invention
- Provide high-quality photographs that clearly show all details
- Submit them on paper that complies with drawing sheet requirements
- Include any necessary mounting on bristol board or equivalent
It’s important to note that color photographs are not ordinarily permitted in utility patent applications.
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What are the signature requirements for patent practitioners in correspondence with the USPTO?
Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:
- They must personally sign correspondence using either a handwritten signature or an S-signature.
- An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
- The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).
According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
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What is the difference between new matter and new or amended claims in patent applications?
New matter and new or amended claims are distinct concepts in patent law:
- New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
- New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’
In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.
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A postcard receipt can play a crucial role in patent applications, especially when pages are allegedly missing. The MPEP 601.01(d) highlights its importance:
Applicant has produced an itemized postcard receipt which specifically lists the omitted pages as having been deposited on the missing parts’ due date.
The significance of the postcard receipt includes:
- Proof of submission: It serves as evidence that specific documents were submitted to the USPTO.
- Date verification: It can confirm the date of submission for various application components.
- Resolution of discrepancies: In cases where the USPTO claims pages are missing, the postcard can help resolve disputes.
- Petition support: It can be used to support a petition to establish the filing date of omitted pages.
Applicants are advised to use detailed, itemized postcard receipts when submitting patent applications to avoid potential issues with missing documents.
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If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:
Applicant is required to cancel the new matter in the reply to this Office action.
To respond, the applicant should:
- Review the identified new matter carefully.
- If the applicant agrees it’s new matter, cancel the objected content in their response.
- If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
- Consider amending the application to use language more closely aligned with the original disclosure.
It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).
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No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:
‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’
This restriction extends for one year after their employment at the USPTO ends.
How does a provisional application affect public disclosure of an invention?
Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’
This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:
- The confidentiality only applies to the USPTO’s handling of your application.
- If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
- The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.
Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.
For more information on provisional application, visit: provisional application.
For more information on public disclosure, visit: public disclosure.
Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:
- The application repeats a substantial portion of a prior application.
- The application adds disclosure not presented in the prior application.
- The application names the inventor or at least one joint inventor named in the prior application.
The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.
However, examiners are advised to use this determination cautiously: This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:
- Inventor’s name
- Application number (if known)
- Confirmation number (if known)
- Filing date
- Title of the invention
- Type of paper being filed
- Number of pages for each component
The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)
If a copy of an oath or declaration from a prior application is filed after the filing date of a continuation or divisional application, you should take the following steps:
- Include a cover letter with the oath or declaration.
- In the cover letter, identify the application number of the continuation or divisional application.
- Indicate in the cover letter that the submitted oath or declaration is a copy from a prior application.
- Label the copy of the oath or declaration with the application number of the continuation or divisional application.
According to MPEP 602.05: If such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file.
These steps help ensure that the oath or declaration is correctly associated with the new application and not mistakenly matched with the prior application file.
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A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):
- With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
- After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.
The MPEP ¶ 2.32 states:
Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.
This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.
If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required.
(MPEP § 211)
However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:
- For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
- For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.
For more information on petition requirements, visit: petition requirements.
If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:
“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”
This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.
For more information on non-English language, visit: non-English language.
For more information on provisional application, visit: provisional application.
To verify if someone is authorized to conduct business with the USPTO for a patent application filed after September 16, 2012, you can follow these steps:
- Check if the person is listed as the applicant or an assignee
- Verify if they are a registered patent practitioner
- Look for a power of attorney or authorization of agent document
- Confirm if they are named as an inventor in the application
The USPTO maintains specific rules about who can correspond regarding patent applications. As stated in MPEP 403.01(a):
For applications filed on or after September 16, 2012, … the applicant’s or patent owner’s correspondence address … is the correspondence address of the patent practitioner appointed in a power of attorney or authorization of agent, or if no practitioner is appointed, the correspondence address of the applicant or patent owner.
If you’re unsure, it’s best to contact the USPTO directly for clarification.
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The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
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What are the consequences of filing an IDS after the mailing of a notice of allowance?
Filing an Information Disclosure Statement (IDS) after the mailing of a notice of allowance can have significant consequences:
- The application will be withdrawn from issue
- The IDS will be considered by the examiner
- If the examiner determines that the application is still allowable, the application may be returned to issue
- If the examiner determines that one or more claims are no longer allowable, the applicant will be notified and the claims will be rejected
As stated in MPEP 609.04(b): “If an IDS is filed after the mailing date of a Notice of Allowance under 37 CFR 1.311, the application will be withdrawn from issue.” This emphasizes the importance of timely IDS submission to avoid potential delays in patent issuance.
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The Background of the Invention section in a patent application may include two main parts:
- Field of the Invention: A statement describing the field of art to which the invention pertains. This may include a paraphrasing of applicable Cooperative Patent Classification (CPC) definitions.
- Description of the related art: Information about the state of the prior art, including references to specific prior art where appropriate. This section should also describe any problems in the prior art that the invention solves.
It’s important to note that while these components are typical, they are not strictly required. As stated in MPEP 608.01(c), “The Background of the Invention may (but is not required to) include the following parts…”
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The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335:
- The patentee, assignee, or licensee is primarily responsible for filing the notice.
- If the required notice is not filed by the designated party, any party to the arbitration proceeding may file the notice.
35 U.S.C. 294(d) states: “When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.”
This flexibility ensures that the USPTO is informed of arbitration outcomes, even if the primary responsible party fails to file the notice.
Yes, there are limitations on the types of files an opposing party can access in a contested case. According to MPEP 2307.02, access is ordinarily limited to specific categories of records:
- The application file for an involved patent
- An involved application
- An application for which a party has been accorded benefit under subpart E of 37 CFR 41
The MPEP explicitly states: “Access and copies will ordinarily only be authorized for the following records: (1) The application file for an involved patent; (2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part.”
It’s important to note that this access is distinct from public access and is specifically granted for the purposes of the contested case. Access to other types of records may be more restricted and would likely require additional justification or special authorization from the Board.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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Can an inventor’s testimony alone prove conception in a patent case?
While an inventor’s testimony is important, it is generally not sufficient on its own to prove conception in a patent case. The MPEP 2138.04 states:
“An inventor’s testimony, standing alone, is insufficient to prove conception, as some form of corroboration is required.”
This requirement for corroboration serves several purposes:
- It helps verify the accuracy of the inventor’s recollection
- It protects against fraudulent claims
- It ensures that the conception date is supported by objective evidence
Corroborating evidence can come in various forms, such as contemporaneous documents, witness testimony, or physical exhibits. The key is that there must be some independent evidence that supports the inventor’s claim of conception beyond their own statement.
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Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter:
“An inventor’s private use of the invention, for his or her own enjoyment is not a public use.”
This principle is illustrated in the case of Moleculon Research Corp. v. CBS, Inc., where the court held that an inventor showing his inventive puzzle to close friends in his dorm room and later discussing it with his company president did not result in a “public use.” The key factor was that the inventor retained control over the invention.
However, it’s important to note that if the private use involves commercial exploitation or if the invention becomes accessible to the public without restrictions, it may still be considered a public use. The determination often depends on the specific circumstances and the level of control the inventor maintains over the invention.
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How does access to files under 37 CFR 41.109 differ from public access under 37 CFR 1.11 and 1.14?
Access to files under 37 CFR 41.109 is distinct from public access under 37 CFR 1.11 and 1.14. The key differences are:
- 37 CFR 41.109 specifically applies to opposing parties in contested cases.
- It allows access to involved patents, applications, and accorded benefit applications.
- This access is independent of public availability under 37 CFR 1.11 and 1.14.
As stated in MPEP 2307.02: “The availability of a file to an opposing party under 37 CFR 41.109 has no bearing on whether a file is otherwise available under 37 CFR 1.11 or 1.14.” This means that even if a file is not publicly available, it may still be accessible to an opposing party in a contested case under 37 CFR 41.109.
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How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
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In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.”
The court upheld an obviousness rejection, stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” This case reinforces the principle that the material worked upon (in this case, adhesive tape) does not necessarily impart patentability to an apparatus claim if it doesn’t result in a structural difference.
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The element in a Sequence Listing XML serves a specific purpose in identifying the type of molecule being described. Here’s how it functions:
- It specifies whether the sequence is DNA, RNA, or protein.
- This information is crucial for proper interpretation of the sequence data.
- It helps in determining the appropriate analysis methods and tools to be used.
The MPEP 2413.01 mentions the as one of the elements within the container. By clearly indicating the molecule type, this element ensures that patent examiners and other readers can correctly understand and evaluate the sequence information provided in the application.
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The element in a Sequence Listing XML is used to describe features of the sequence. Here’s how it’s structured and used:
- It contains one or more elements.
- Each element describes a specific feature of the sequence.
- Features can include biological significance, such as coding regions or mutation sites.
The MPEP 2413.01 states: “The contains one or more elements.” This table allows applicants to provide detailed information about specific regions or characteristics of the sequence, which is crucial for understanding its biological function and patentability.
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The MPEP 2106.04(d)(2) provides examples of claims that do not integrate a judicial exception through treatment. These include:
- Insignificant extra-solution activity: “For example, a claim reciting the step of ‘administering a drug providing 6-thioguanine to a patient’ (without more) is not a meaningful limitation.”
- General treatment: “For example, consider a claim that recites mentally analyzing information to identify if a patient has a genotype associated with poor metabolism of beta blocker medications and then ‘administering a lower than normal dosage of a beta blocker medication to a patient identified as having the poor metabolizer genotype.’”
- Field of use limitations: “For instance, a claim that recites ‘administering a suitable medication to a patient’ is not a meaningful limitation because it does not specify what the medication is or how it is administered.”
These examples illustrate that treatments that are too general, lack specificity, or are merely incidental to the core of the invention may not be sufficient to integrate a judicial exception into a practical application.
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What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
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The phrase “The Invention Was Made in This Country” refers to a specific requirement in pre-AIA (pre-America Invents Act) U.S. patent law. According to MPEP 2138.02, this requirement is related to prior art under pre-AIA 35 U.S.C. 102(g).
The MPEP states: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.” This means that for an invention to be considered prior art under this section, it must have been made within the United States.
It’s important to note that this requirement has limited applicability to applications subject to the first inventor to file (FITF) provisions of the AIA. For current applications, refer to MPEP § 2159 et seq. to determine if this rule applies.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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The element in a Sequence Listing XML contains crucial information about the actual sequence. Here’s what it includes:
- The raw sequence data itself.
- It represents the order of nucleotides (for DNA/RNA) or amino acids (for proteins).
- The sequence is presented without spaces or numbers.
According to MPEP 2413.01, “The contains the raw sequence data.” This element is essential as it provides the core information about the biological sequence being disclosed in the patent application.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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The element in a Sequence Listing XML serves a specific purpose:
- It is used to provide additional sequence identifiers for a given sequence.
- This element can contain one or more sub-elements.
- Each sub-element represents an alternative identifier for the sequence.
According to MPEP 2413.01, “The contains one or more elements identifying alternative sequences.” This allows for flexibility in referencing sequences using different identification systems or nomenclatures.
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What is the significance of In re Leshin in MPEP 2144.07?
The case In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) is cited in MPEP 2144.07 as an important precedent. The section states:
“Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, was held to be nonpatentable.”
This case reinforces the principle that selecting a known material based on its suitability for an intended use is generally not patentable. It demonstrates that even when an inventor chooses a specific type of plastic for a container, if that plastic was known and suitable for such use before the invention, the selection alone is not enough to establish patentability. This case helps patent examiners and practitioners understand how to apply the concept of “art recognized suitability” in evaluating the obviousness of material choices in inventions.
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The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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According to MPEP 2308.01, there are multiple types of judgments in an interference that can lead to the final disposal of claims. The section states: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This means that the following types of judgments can result in final disposal:
- Priority judgments: Determining which party was the first to invent
- Patentability judgments: Deciding if the claim meets the requirements for patentability
- Other adverse judgments: Any other judgment that goes against the claim in question
Each of these judgments, when rendered against a claim, results in the final disposal of that claim, preventing further prosecution in its current form.
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Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
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Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
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According to 37 CFR 1.1042, applicants can specify a correspondence address for communications sent by the USPTO as an office of indirect filing. The MPEP states:
“Pursuant to 37 CFR 1.1042, the applicant may specify a correspondence address for correspondence sent by the USPTO as an office of indirect filing.“
This address can be different from the one specified on the official DM/1 form used for filing the international design application. If no specific address is provided, the USPTO will use the address of the applicant’s appointed representative or the address specified in Administrative Instruction 302.
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How does public accessibility affect the status of a printed publication in patent law?
Public accessibility is a crucial factor in determining whether a document qualifies as a printed publication under patent law. According to MPEP 2152.02(b):
“The public accessibility of the material is the key inquiry in determining whether a reference qualifies as a ‘printed publication’ bar under 35 U.S.C. 102(a)(1).”
This means that:
- The material must be accessible to the public or to persons interested and ordinarily skilled in the subject matter.
- There must be no reasonable expectation of secrecy.
- The date of public accessibility is considered the publication date.
For example, a thesis in a university library or a paper presented at a conference may be considered publicly accessible if it’s available to those interested in the field without restriction.
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No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
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The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
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According to MPEP 2307.02, any request for access to or copies of Office records directly related to a contested case must adhere to the following requirements:
- The request must be filed with the Board.
- It must precisely identify the records being requested.
- For copies, the appropriate fee set under 37 CFR 1.19(b) must be included.
As stated in the MPEP: “Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.”
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The procedure for seeking relief from prescribed time limits in international design applications is outlined in 37 CFR 1.1051. This procedure allows applicants to excuse unintentional delays in meeting time limits under the Hague Agreement for requirements related to international design applications.
The key components of this procedure include:
- Filing a petition with the USPTO
- Providing necessary documentation
- Paying required fees
- Submitting a statement of unintentional delay
- Filing a terminal disclaimer in certain cases
As stated in the MPEP: “Pursuant to 35 U.S.C. 387, 37 CFR 1.1051 sets forth a petition procedure to excuse, with respect to the United States, an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application where the delay in applicant’s failure to act was unintentional.“
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Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
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An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:
“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”
This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.
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Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP:
- Show that the Office erred in its factual findings
- Provide evidence to demonstrate nonobviousness
- Present arguments pointing out specific distinctions that render the claims patentable
- Submit rebuttal evidence, including evidence of secondary considerations
The MPEP states: “37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action.”
Applicants should provide a reasoned statement explaining why they believe the Office has erred in its factual findings or legal conclusions. Mere statements that the Office has not established a prima facie case of obviousness without substantive arguments are generally not considered adequate to rebut the rejection.
When presenting rebuttal evidence, applicants should explain how the evidence demonstrates nonobviousness, such as unexpected results or long-felt but unsolved needs.
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If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:
- For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
- For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS
This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:
The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.
It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.
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The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
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What is the Customer Number practice at the USPTO for patent applications?
The Customer Number practice at the USPTO is a system that simplifies the process of managing correspondence addresses for patent applicants and practitioners. Key aspects of this practice include:
- A Customer Number is a unique identifier assigned by the USPTO to a specific address.
- It allows for easy updating of correspondence information for multiple applications.
- Customer Numbers can be associated with Power of Attorney forms.
According to MPEP 403.01(a): ‘The Customer Number practice permits a patent applicant, assignee or practitioner of record to change the correspondence address for a number of applications or patents with one change of address filed in one location.’
To use the Customer Number practice:
- Request a Customer Number from the USPTO using the Customer Number Request form (PTO/SB/125A).
- Associate the Customer Number with your applications using the appropriate forms or through the USPTO’s electronic filing system.
- Update your correspondence address by modifying the Customer Number information, which will automatically update all associated applications.
This practice significantly streamlines the process of managing correspondence for multiple patent applications, making it easier for applicants and practitioners to maintain up-to-date contact information with the USPTO.
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Unpublished U.S. applications can serve as prior art under pre-AIA 35 U.S.C. 102(e) in certain circumstances. According to the MPEP, If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.
However, this is subject to specific conditions, such as common assignee, applicant, or inventor.
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37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:
- It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
- The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The prior-filed application must contain the certified copy and be identified as such.
- This provision can simplify the process of perfecting priority claims in related applications.
The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.
A preamble is considered limiting when it gives life, meaning, and vitality to the claim or if it recites essential structure or steps. According to MPEP 2111.02:
“If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”
This principle is illustrated in cases like Pitney Bowes, Inc. v. Hewlett-Packard Co. and Jansen v. Rexall Sundown, Inc., where the courts found the preambles to be limiting because they gave essential meaning to the claims.
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How does the AIA define “public use” for patent purposes?
The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c):
“Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date of the claimed invention.”
The MPEP further clarifies that public use under the AIA is defined as any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public. This definition emphasizes the accessibility of the invention to the public, rather than the inventor’s control over the invention or their intent to keep it secret.
It’s important to note that the AIA’s definition of public use is broader than under pre-AIA law, as it includes uses that may not have been visible or known to the public, as long as the use was not actively kept secret.
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The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
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If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):
- First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
- If unsuccessful, submit the following to the Assignment Services Division:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration:
- Identifying yourself as the correct owner
- Stating that the previously recorded document contained erroneous information
- Providing the reel and frame number of the incorrectly recorded document
- The required fee for each application or patent to be corrected
The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.
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A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:
Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.
The chain of title includes:
- Original patent assignment
- Subsequent transfers of ownership
- Business name changes
- Mergers and acquisitions
- Any other events affecting patent ownership
Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
If an applicant’s Information Disclosure Statement (IDS) is not considered due to noncompliance, they have options to address the issue. According to MPEP 609.05(a):
Applicant may then file a new information disclosure statement or correct the deficiency in the previously filed IDS, but the date that the new IDS or correction is filed will be the date of the IDS for purposes of determining compliance with the requirements based on the time of filing of the IDS (37 CFR 1.97).
This means the applicant can either:
- File a new, compliant IDS
- Correct the deficiencies in the previously filed IDS
It’s important to note that the date of the new or corrected IDS will be considered the filing date for compliance purposes. Applicants should ensure they address the specific issues mentioned in the examiner’s notification to avoid further delays.
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Treatment or prophylaxis limitations are a specific type of meaningful limitation that can render a claim patent-eligible. These limitations are particularly relevant in medical and biotechnology fields.
MPEP 2106.05(e) notes:
“With respect to treatment or prophylaxis limitations, such as the immunization step in Classen, examiners should note that the other meaningful limitations consideration overlaps with the particular treatment or prophylaxis consideration that is evaluated in Step 2A Prong Two (see MPEP § 2106.04(d)(2)).”
This overlap means that treatment or prophylaxis steps can serve as both meaningful limitations and evidence of integration into a practical application. These limitations are often concrete, specific actions that apply the judicial exception in a meaningful way, transforming abstract ideas or natural phenomena into patent-eligible subject matter.
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The relationship between the specification and claims in a patent application is crucial. As indicated in MPEP 608.01(k), “35 U.S.C. 112 requires that the specification shall particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as his or her invention.”
This means:
- The specification provides a detailed description of the invention
- The claims, which are part of the specification, define the legal scope of protection
- The claims must be supported by the description in the specification
- The specification should enable a person skilled in the art to make and use the invention as claimed
In essence, the specification provides the context and detailed explanation of the invention, while the claims define the specific elements for which legal protection is sought.
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What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
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Can a priority claim be corrected after the patent has been issued?
Yes, it is possible to correct a priority claim after a patent has been issued, but the process is more complex and limited compared to correcting a priority claim in a pending application.
According to MPEP 214.02: ‘For a correction of foreign priority claim after issuance of a patent, see MPEP § 216.01.’
To correct a priority claim in an issued patent, the following steps are typically required:
- File a petition for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Pay the required fee.
- Provide a statement that the error occurred without deceptive intent.
- Submit evidence to support the correction, such as a certified copy of the priority document.
It’s important to note that the scope for correcting priority claims in issued patents is more limited than in pending applications. The correction must not involve a change that would broaden the scope of the claims of the issued patent.
For more detailed information on correcting foreign priority claims after patent issuance, refer to MPEP § 216.01.
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To correct a typographical error in a recorded assignment document, you have two main options:
- Create and record a new document
- Make corrections to the original document and re-record it
According to MPEP 323.01(b):
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
This means that the assignor (the party transferring the rights) is typically responsible for correcting such errors.
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Yes, there are additional fees for submitting large Sequence Listing files to the USPTO. The fee structure is as follows:
- Sequence Listing ASCII plain text files of 300 MB or more are subject to a fee under 37 CFR 1.21(o).
- The fee is divided into two tiers:
- Tier 1: File sizes 300 MB to 800 MB
- Tier 2: File sizes greater than 800 MB
- The fee is due upon the first submission of a Sequence Listing that meets the size criteria.
- If a larger file is submitted later, the difference in fees must be paid.
The MPEP states: Any “Sequence Listing” ASCII plain text file of 300 MB or more is subject to a fee under 37 CFR 1.21(o) to manage handling of the oversized submission (37 CFR 1.52(f)(3)). Pricing for this fee is divided into two tiers with Tier 1 for file sizes 300 MB to 800 MB and Tier 2 for file sizes greater than 800 MB.
It’s important to note that these fees are designed to encourage applicants to include only essential sequence data in their Sequence Listings, thereby reducing strain on USPTO resources.
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The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways:
- “No cause” extensions for up to two months are not available.
- All requests must be filed on or before the day on which action by the patent owner is due.
- All requests must include a showing of sufficient cause and be for a reasonable time.
- The mere filing of a request does not automatically effect an extension.
- First requests are generally granted for one month if sufficient cause is shown.
- Second or subsequent requests are only granted in extraordinary situations.
The MPEP states: “The extension of time practice under 37 CFR 1.550(c) for patent owner responses in an ex parte reexamination proceeding which has been requested by a third party, i.e., a third party requested ex parte reexamination, remains unchanged under the rules and practices adopted in view of the Patent Law Treaty (PLT).“
This difference is due to third-party requested reexaminations being considered “inter partes proceedings” under the Patent Law Treaty, while patent owner requested and Director ordered reexaminations are not.
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35 U.S.C. 112(f) (formerly 35 U.S.C. 112, sixth paragraph) has a specific relationship to the doctrine of equivalents. MPEP 2186 explains:
“35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, permit means- (or step-) plus-function limitations in claims to combinations, ‘with the proviso that application of the broad literal language of such claims must be limited to only those means that are ‘equivalent’ to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements.’”
In essence, 35 U.S.C. 112(f) applies the doctrine of equivalents in a restrictive manner to means-plus-function claim limitations, limiting their scope to equivalents of the structures disclosed in the specification.
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The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662:
The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit is two months from the date of the Board decision. If a timely request for rehearing (37 CFR 41.79) is filed, the time for the patent owner and/or the third party requester to file a notice of appeal to the Federal Circuit is two months from final Board action on the request for rehearing. 37 CFR 1.304(a)(1).
Key points to remember:
- The standard appeal period is two months from the date of the Board decision.
- If a request for rehearing is filed, the two-month period starts from the final Board action on that request.
- The appeal must be made to the U.S. Court of Appeals for the Federal Circuit.
It’s crucial to adhere to these deadlines, as failing to file a timely notice of appeal may result in the loss of appeal rights. Parties should also be aware of the procedures for requesting a rehearing, as this can affect the timeline for appealing to the Federal Circuit.
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The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
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When writing your patent application abstract, it’s important to avoid several common mistakes. The MPEP 608.01(b) provides guidance on what to avoid:
The abstract should avoid using phrases which can be implied, such as, ‘The disclosure concerns,’ ‘The disclosure defined by this invention,’ ‘The disclosure describes,’ etc.
Common mistakes to avoid include:
- Using legal phraseology or claims language
- Exceeding the 150-word limit
- Including speculative applications or purported merits of the invention
- Comparing the invention to prior art
- Using implied phrases like ‘This invention relates to…’
- Including extraneous information not crucial to understanding the invention
- Writing in a promotional or biased manner
By avoiding these mistakes, you can create a clear, concise, and effective abstract that accurately represents your invention.
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No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.
According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.
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If you’ve filed a patent application without necessary drawings, you have a limited time to submit them. According to MPEP 601.01(f):
“The applicant is given a time period of 2 months from the date of the notification to submit the omitted drawings and avoid abandonment of the application.”
This two-month period is set when the USPTO issues a Notice of Omitted Items. It’s crucial to respond within this timeframe to prevent your application from being abandoned. If you need more time, you can request an extension, but fees may apply.
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According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:
- A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
- All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.
The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
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The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
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Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure.
The MPEP provides an example: New matter includes not only the addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method.
(MPEP 608.04(a))
This concept is particularly important in the context of:
- Changing the scope of the invention
- Altering the nature of the invention
- Removing essential features or steps
Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.
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Yes, you must assert small entity status separately for each related application. Specifically:
- Status must be established in each related, continuing, and reissue application
- Small entity status in one application does not affect the status of any other application or patent
- A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications
According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”
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The rights of nonsigning inventors in pre-AIA 37 CFR 1.47 applications are protected through specific provisions in patent law. According to MPEP 409.03(i):
“The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application.”
This means that:
- For applications under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118, the patent must be issued to the inventor, even if they didn’t sign the application.
- For applications under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the nonsigning inventor retains the same rights as if they had joined the application.
These provisions ensure that the nonsigning inventor’s rights to the invention are preserved, regardless of their lack of signature on the original application.
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In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
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How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
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The formatting of your patent application abstract should follow specific guidelines. According to MPEP 608.01(b):
The sheet or sheets presenting the abstract may not include other parts of the application or other material.
Key formatting points include:
- Start the abstract on a separate sheet
- Use a single paragraph
- Avoid referring to purported merits or speculative applications
- Do not compare the invention with the prior art
- Preferably limit to 150 words
- If using reference characters from the drawings, place them in parentheses
Proper formatting ensures that your abstract is clear, concise, and easy for examiners and other readers to quickly understand.
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What are the income limitations for qualifying as a micro entity?
To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:
“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))
For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.
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According to 37 CFR 1.72(b), the requirements for an abstract in a patent application are:
- It must commence on a separate sheet, preferably following the claims.
- It should be under the heading ‘Abstract’ or ‘Abstract of the Disclosure’.
- The sheet presenting the abstract should not include other parts of the application.
- It should be concise, preferably not exceeding 150 words in length.
- It should enable quick determination of the nature and gist of the technical disclosure.
The USPTO states: The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
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When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
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If a patent application is missing an abstract, the following actions will be taken:
- For applications filed under 35 U.S.C. 111(a), the Office of Patent Application Processing (OPAP) will review for compliance and require an abstract if one has not been filed.
- For all other applications lacking an abstract, the examiner will require the submission of an abstract in the first Office action.
The MPEP states: The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.
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When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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The recommended length for a patent application abstract is typically 150 words or less. According to MPEP 608.01(b):
The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims.
While 150 words is the preferred maximum length, the MPEP also notes that the abstract should be as concise as the disclosure permits. This means that if the invention can be adequately summarized in fewer words, a shorter abstract is acceptable and even encouraged.
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If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):
If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.
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For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see 37 CFR 1.53(d)(4)).”
This meant that for continued prosecution design applications, a statement requesting the deletion of non-inventors had to be submitted along with the filing request when there were changes in inventorship.
To learn more:
- continued prosecution design application
- inventorship changes
- 37 CFR 1.53(d)
- continuation application
- divisional application
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If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
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New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
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No, a suspended or excluded practitioner is not permitted to receive correspondence from the USPTO regarding patent applications. According to MPEP 407:
A suspended or excluded practitioner is not entitled to receive correspondence from the Office, or have interviews with examiners, in applications or patents.
The USPTO takes the following steps to ensure compliance:
- Correspondence will be sent to the applicant or assignee at their address of record.
- If no practitioner is of record, the correspondence will be sent directly to the applicant or assignee.
- Examiners are instructed not to hold interviews with suspended or excluded practitioners.
For more information on USPTO correspondence, visit: USPTO correspondence.
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:
- The Office will not correspond with both an applicant and their attorney/agent.
- The Office will not correspond with more than one attorney/agent.
- If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.
According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”
Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”
To access USPTO public information facilities:
- A valid Public User or Visitor’s badge is required
- Badges can be obtained from the Office of Security next to the Public Search Facility
- An On-line Service Card is required for access to all Public Search Facilities and on-line systems
MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
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Can a withdrawn attorney continue to receive Office communications for a patent application?
No, a withdrawn attorney should not continue to receive Office communications for a patent application. The MPEP 402.06 clearly states:
“An attorney or agent withdrawing from an application who wishes to cease receiving copies of communications from the Office must submit a request that the correspondence cease.”
This means that unless the withdrawn attorney explicitly requests to stop receiving communications, they may continue to receive them. However, it’s important to note that the withdrawn attorney is no longer authorized to act on behalf of the application. To ensure proper handling of the application, the withdrawn attorney should request that correspondence cease, and the applicant or new representative should update the correspondence address with the USPTO.
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The interpretation of “equivalents” in means-plus-function claims can vary depending on how the element is described in the supporting specification. According to MPEP 2184:
“Generally, an ‘equivalent’ is interpreted as embracing more than the specific elements described in the specification for performing the specified function, but less than any element that performs the function specified in the claim.”
The scope of equivalents can range from broad to narrow:
- If the disclosure is broad, it may encompass any structure, material, or act that performs the claimed function.
- If the specification describes the invention only in the context of a specific structure, material, or act, the scope of equivalents may be constricted to virtually only the disclosed embodiments.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states:
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
This case reinforces the principle that the inclusion of the material or article worked upon by an apparatus does not automatically confer patentability. Patent examiners and practitioners should focus on the structural elements of the claimed apparatus rather than the output it produces.
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The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
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How does the In re Fisher case relate to the predictability of art and enablement?
The In re Fisher case is significant in understanding the relationship between the predictability of art and enablement. According to MPEP 2164.03:
“In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) states: ‘The scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.’”
This case established that:
- The breadth of claims must be reasonably correlated to the scope of enablement in the specification.
- In unpredictable arts, broad claims may not be enabled by a limited disclosure.
- The more unpredictable the art, the more specific enablement is necessary.
This principle guides patent examiners and applicants in assessing whether a specification provides sufficient enablement, especially in less predictable fields like biotechnology and chemistry.
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The “in this country” limitation in Pre-AIA 35 U.S.C. 102(a) applies specifically to the “known or used” clause of the statute. The MPEP clarifies:
“The knowledge or use relied on must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).”
This means that for prior art to be considered under the “known or used” provision, the knowledge or use must have occurred within the United States. However, it’s important to note that this geographical limitation does not apply to printed publications or patents. A printed publication or patent from anywhere in the world can still be used as prior art under this section if it meets the other criteria.
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The MPEP provides several examples of claims that do not recite abstract ideas:
- A method for calculating an absolute position of a GPS receiver
- A method for detecting suspicious activity using network monitors and analyzing network packets
- A specific data encryption method for computer communication
- A method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask
The MPEP explains: “These claims are not directed to an abstract idea because they do not recite an abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea.“
These examples illustrate that claims involving complex technological processes or specific improvements to computer functionality are less likely to be considered abstract ideas.
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The MPEP 2106.05(h) provides several examples of limitations that courts have described as merely indicating a field of use or technological environment. Here are some key examples:
- Limiting drug administration to patients with a specific disorder (Mayo Collaborative Servs. v. Prometheus Labs. Inc.)
- Identifying participants in a hedging process as commodity providers and consumers (Bilski v. Kappos)
- Limiting the use of a mathematical formula to determining the circumference of a wheel (Parker v. Flook)
- Specifying that audit log data relates to transactions executed in a computer environment (FairWarning v. Iatric Sys.)
- Limiting virus screening to a telephone network or the Internet (Intellectual Ventures I v. Symantec Corp.)
- Limiting the collection and analysis of data to the electric power grid (Electric Power Group, LLC v. Alstom S.A.)
- Specifying that a budgeting abstract idea is implemented using a “communication medium” including the Internet and telephone networks (Intellectual Ventures I v. Capital One Bank)
These examples demonstrate that merely limiting an abstract idea or judicial exception to a particular field or technological environment is not sufficient to make a claim patent-eligible.
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When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “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).”
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What are the requirements for INSDSeq_length in a Sequence Listing XML?
According to MPEP 2413, the INSDSeq_length element in a Sequence Listing XML has specific requirements:
- It must be a positive integer
- It represents the number of residues in the sequence
- For nucleotide sequences, it includes both nucleotides and nucleotide analogs
- For amino acid sequences, it includes amino acids, modified amino acids, and unknown amino acids
MPEP 2413 states: “The length of the sequence must be indicated by a positive integer expressing the number of residues.”
This element is crucial for accurately representing the size of each sequence in the Sequence Listing XML file.
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For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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Yes, applicants need to specify the term of deposit even if it’s made under the Budapest Treaty. The MPEP clearly states:
Unless applicant indicates that the deposit has been made under the Budapest Treaty, applicant must indicate the term for which the deposit has been made.
This means that if the deposit is not explicitly stated to be under the Budapest Treaty, the applicant must provide information about the term of deposit. Even for Budapest Treaty deposits, it’s advisable to clearly state the term to avoid any potential issues or misunderstandings during the examination process.
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The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
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When submitting a “Sequence Listing XML” on read-only optical discs, proper labeling and packaging are crucial. According to MPEP 2413.03, follow these guidelines:
- Marking: All read-only optical discs, fees, and accompanying papers should be marked “Mail Stop SEQUENCE.”
- Hand delivery: For hand delivery to the Customer Service Window, place the disc in a protective mailer labeled with at least the application number (if available).
- Labeling requirements: Adhere to the labeling requirements of 37 CFR 1.52(e) and 1.834(b)(2).
- Packaging: Use staples and clips carefully to attach the mailer to the submitted papers without contacting or compressing the media.
- Multiple discs: If a compressed XML file doesn’t fit on a single disc, it may be split into multiple parts, labeled in compliance with § 1.52(e)(5)(vi).
The MPEP also states: “In no situations should additional or complimentary electronic copies be delivered to examiners or other Office personnel.”
By following these guidelines, you ensure proper handling and processing of your “Sequence Listing XML” submission.
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No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states:
“Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.”
However, it’s important to note that while public knowledge may not constitute public use under 102(b), it could potentially provide grounds for rejection under other sections of the patent law, such as pre-AIA 35 U.S.C. 102(a).
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An invention is considered “ready for patenting” in the context of public use when it has been reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that are sufficiently specific to enable a person skilled in the art to practice the invention. This concept is crucial in determining whether a public use or sale has occurred before the critical date. According to MPEP 2133.03(c):
“The on-sale bar of 35 U.S.C. 102(b) may apply even though the invention is not ready for use in a commercially marketable form.”
The MPEP further clarifies that an invention can be “ready for patenting” when:
- The invention is reduced to practice; or
- The inventor had prepared drawings or other descriptions of the invention sufficient to enable a person of ordinary skill in the art to practice the invention.
It’s important for inventors to be aware that even if an invention is not fully perfected, it may still be considered “ready for patenting” if it meets these criteria.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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No, the USPTO cannot record a non-English assignment document without an accompanying English translation. MPEP 302.02 clearly states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This policy ensures that all recorded documents are accessible and understandable to USPTO examiners and the public. Attempting to record a non-English document without a translation will result in the document being rejected for recordation.
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The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
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The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent:
- Multiple ex parte reexamination proceedings are generally merged into a single proceeding.
- If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations.
- The USPTO may suspend one proceeding in favor of another to promote efficiency.
The MPEP states: “If multiple ex parte reexamination proceedings are pending concurrently on a patent, the proceedings will generally be merged. If a reissue application is pending concurrently with a reexamination proceeding, the USPTO will usually merge the two proceedings.”
This approach ensures a coordinated examination and helps prevent conflicting outcomes.
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What are the requirements for proper dependency in multiple dependent claims?
Multiple dependent claims must meet specific requirements for proper dependency:
- They must refer back to previous claims in the alternative only.
- A multiple dependent claim cannot serve as a basis for any other multiple dependent claim.
- They must be written in a form that includes all limitations of each of the claims to which it refers.
The MPEP 608.01(n) states:
“A multiple dependent claim may refer in the alternative to only one set of claims. A claim such as ‘A machine according to claims 3 or 4, further comprising —‘ is improper.”
This means that a multiple dependent claim must clearly specify the alternative dependencies and cannot mix single and multiple dependencies in the same claim.
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Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
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To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:
- The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
- The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.
As stated in the MPEP: “If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2).“
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While joint inventors don’t need to work together physically or simultaneously, there must be some level of collaboration or connection. The MPEP cites the case Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., which states:
“For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.”
This indicates that complete isolation or unawareness of each other’s work is not sufficient for joint inventorship. Some form of collaborative effort or shared knowledge is necessary.
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There are two primary methods to check the maintenance fee payment status of a patent:
- Online: Visit the USPTO’s Maintenance Fee webpage. Enter the patent number and corresponding application number in the appropriate fields.
- By Phone: Call the USPTO’s Maintenance Fee Branch. Note that telephone status requests are limited to two patent numbers per call.
As stated in the MPEP: “Maintenance fee status information for a patent of interest can be obtained over the internet by entering the patent number and the corresponding application number in the appropriate spaces on the webpage available at https://fees.uspto.gov/MaintenanceFees.”
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The brief description of drawings for a patent application should include:
- A reference to each figure by number (e.g., Figure 1, Figure 2)
- A brief explanation of what each figure depicts
According to MPEP 608.01(f): The specification must contain or be amended to contain a brief description of the several views of the drawings.
It’s important to note that this section should be concise and not include detailed descriptions of the drawings, which belong in the Detailed Description section.
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Pre-AIA 35 U.S.C. 102(g) is a provision in U.S. patent law that was relevant before the America Invents Act (AIA) came into effect. According to MPEP 2138.02:
“Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.”
This section of the law was significant because it:
- Defined what could be considered prior art based on earlier invention
- Was limited to inventions made in the United States
- Was used in determining priority in interference proceedings
The MPEP further clarifies: “Subject matter under pre-AIA 35 U.S.C. 102(g) is available only if made in this country.”
It’s important to note that while this section still applies to some older patent applications, its relevance has diminished with the implementation of the AIA, which shifted the U.S. to a first-inventor-to-file system.
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What are the consequences of filing an incomplete application?
Filing an incomplete application can have serious consequences:
- No filing date: An incomplete application may not be assigned a filing date. As stated in MPEP 601.01, “The filing date of an application for patent is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 35 U.S.C. 112(a) and at least one claim pursuant to 35 U.S.C. 112(b), and any drawing required by 35 U.S.C. 113 are filed in the Patent and Trademark Office.”
- Loss of priority: Without a filing date, you may lose priority rights or the ability to claim the benefit of an earlier filing date.
- Potential abandonment: If the missing parts are not submitted within the required time frame, the application may be considered abandoned.
- Additional fees: Late submission of required elements may incur additional fees.
It’s crucial to ensure all required elements are included when filing a patent application to avoid these potential issues.
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While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p):
- A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as it’s clear that the claim is directed to the product and not the process.
- However, a single claim that claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).
The key is to ensure that the claim is clearly directed to either the product or the process, avoiding ambiguity that could lead to indefiniteness.
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In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
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When there are multiple applicants for a patent and only some give power of attorney, the USPTO has specific rules to handle the situation. According to MPEP 402:
‘Where a power of attorney is given by fewer than all of the applicants or owners, the power of attorney is not accepted until a petition under 37 CFR 1.36(b) is granted.’
This means:
- The power of attorney is not automatically accepted if not all applicants have signed it.
- A petition under 37 CFR 1.36(b) must be filed and granted for the partial power of attorney to be accepted.
- The petition should explain why it was not possible to obtain signatures from all applicants.
- The Office of Petitions will review the petition and make a determination.
It’s generally recommended to obtain signatures from all applicants to avoid delays and potential issues with the patent application process.
For more information on power of attorney, visit: power of attorney.
For more information on USPTO, visit: USPTO.
To check the maintenance fee payment status for a specific patent, you can use the following methods:
- Visit the USPTO’s Patent Maintenance Fees Storefront and enter the patent number.
- Use the Patent Application Information Retrieval (PAIR) system to access detailed maintenance fee information.
- Contact the USPTO’s Office of Finance directly at 571-272-6500.
According to MPEP 2570, “The Office will respond to requests for the maintenance fee status of patents. The Office will provide the status including the amount of any maintenance fee paid, the date paid, and any expiration date.”
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The MPEP highlights a key difference between U.S. patent law and that of other countries regarding inventorship:
“The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries.” MPEP 2109
This means that in the U.S., the actual inventors must be named on the patent application, whereas in some other countries, the applicant (who may be a company or assignee) can be named instead of or in addition to the inventors. This difference can lead to confusion for foreign applicants filing in the U.S.
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While the AIA’s “on sale” provision is largely interpreted similarly to pre-AIA law, there are some key differences. The MPEP highlights two main distinctions:
- Geographic limitations: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where the sale or offer for sale may occur.” This contrasts with pre-AIA law, which limited “on sale” activities to those occurring “in this country.”
- Exceptions: “[C]ertain uses or sales are subject to the exceptions in 35 U.S.C. 102(b)(1), e.g., uses or sales by the inventor or a joint inventor (or have originated with the inventor) that precede the effective filing date by less than one year.”
These differences can significantly impact how “on sale” activities are evaluated in patent applications under AIA compared to pre-AIA law.
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What constitutes a “composition of matter” in patent law?
A “composition of matter” is one of the four categories of statutory subject matter in patent law. The MPEP 2106.03 defines it as follows:
“A composition of matter is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.“
This definition is derived from the Supreme Court’s interpretation in Diamond v. Chakrabarty, 447 U.S. 303 (1980). Compositions of matter can include chemical compounds, mixtures, or other combinations of materials. This category is particularly relevant in fields such as chemistry, pharmaceuticals, and materials science.
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“Unintentional delay” in paying maintenance fees is a crucial concept for reinstating expired patents. According to MPEP 2590:
“A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee.”
This means that the entire period of delay, from the missed payment deadline to the filing of the petition, must be unintentional. Intentional delays, even after discovering the missed payment, can disqualify a patent from reinstatement.
For delays exceeding two years, the USPTO requires additional explanation to establish that the entire delay was unintentional.
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Non-compliance with Sequence Listing requirements can have significant consequences for patent applications. According to MPEP 2427, consequences may include:
- Delayed examination of the application
- Issuance of a notice of non-compliant amendment
- Requirement to submit a compliant Sequence Listing and associated documentation
- Potential loss of filing date if the non-compliance is not corrected in a timely manner
The USPTO uses various form paragraphs (e.g., ¶ 24.01 – ¶ 24.17) to notify applicants of specific deficiencies and required responses. For example, form paragraph ¶ 24.02 states: “This application fails to comply with the requirements of 37 CFR 1.821 – 1.825 because it does not contain a ‘Sequence Listing’ as a separate part of the disclosure or a CRF of the ‘Sequence Listing’.”
Applicants must address these issues promptly to avoid potential delays or other negative impacts on their patent applications.
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While both exceptions relate to prior public disclosures by inventors, there are key differences:
- AIA 35 U.S.C. 102(b)(1)(B) applies to disclosures made within the grace period (1 year before the effective filing date).
- AIA 35 U.S.C. 102(b)(2)(B) has no grace period limitation and can apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2).
The MPEP states: “There is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.” This means that an inventor’s public disclosure can potentially disqualify a later-filed U.S. patent document as prior art, even if that document was filed years after the inventor’s disclosure.
However, it’s important to note that if the inventor’s public disclosure is not within the grace period, it would still qualify as prior art under AIA 35 U.S.C. 102(a)(1) and could not be excepted under AIA 35 U.S.C. 102(b)(1).
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The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113:
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
This case established that the focus of examination for product-by-process claims should be on the product itself, not the process of making it. However, if the process imparts distinctive structural characteristics to the final product, those characteristics should be considered in determining patentability.
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The submission of biological material specimens to the USPTO is governed by specific requirements outlined in MPEP 608.03(a). The key points are:
- Proper packaging: Specimens must be submitted in containers that ensure their safe delivery.
- Identification: Each specimen should be clearly identified with the inventor’s name, the application number, and the filing date.
- Compliance with regulations: Submissions must comply with all applicable regulations, including those related to dangerous materials and biotechnology inventions.
The MPEP specifically states:
‘Biological specimens will not be returned to the applicant. The procedures for submittal of samples of biological materials for deposit in a suitable depository for patent purposes are governed by 37 CFR 1.801 – 1.809.’
It’s crucial for applicants to follow these guidelines to ensure proper handling and consideration of their biological material specimens during the patent examination process.
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The “effectively filed” date is crucial for determining whether a reference qualifies as prior art under 35 U.S.C. 102(a)(2). The MPEP explains:
“Even if the issue or publication date of the reference is not before the effective filing date of the claimed invention, the reference may still be applicable as prior art under 35 U.S.C. 102(a)(2) if it was ‘effectively filed’ before the effective filing date of the claimed invention with respect to the subject matter relied upon to reject the claim.”
Key points about the “effectively filed” date:
- It’s determined by 35 U.S.C. 102(d) for U.S. patents, U.S. patent application publications, and WIPO published applications
- It can be earlier than the actual filing date of the application
- It allows unpublished patent applications to potentially serve as prior art
- It’s crucial for determining the scope of prior art in the first-inventor-to-file system
Understanding the “effectively filed” date is essential for both patent examiners and applicants in assessing the relevance of potential prior art references.
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The MPEP 2210 provides guidance on how a third party can anonymously request ex parte reexamination:
“If a third party requester desires anonymity, the request for ex parte reexamination can be filed by an attorney or agent representing the third party requester. The attorney or agent should not be the attorney or agent of record in the patent file.”
The MPEP further clarifies:
- The request must be signed by the attorney or agent
- The attorney or agent may not use the “certificate of service” portion of the reexamination request
- Any correspondence address provided should be that of the attorney or agent
This approach allows the third party to maintain anonymity while still initiating the reexamination process.
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The signature requirements for a petition for delayed payment of maintenance fees depend on when the application was filed, as outlined in MPEP 2590:
For applications filed on or after September 16, 2012:
According to 37 CFR 1.33(b), the petition must be signed by:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under 37 CFR 1.34
- The applicant (37 CFR 1.42)
For juristic entities, the petition must be signed by a patent practitioner unless otherwise specified.
For applications filed before September 16, 2012:
Pre-AIA 37 CFR 1.33(b) allows the petition to be signed by:
- A patent practitioner of record
- A patent practitioner not of record acting in a representative capacity
- An assignee as provided for under pre-AIA 37 CFR 3.71(b)
- All of the applicants (pre-AIA 37 CFR 1.41(b))
It’s crucial to ensure the correct person signs the petition to avoid potential delays or rejections.
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While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:
“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”
The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.
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Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.“
This means that while reference characters can be used to clarify which elements in the detailed description and drawings correspond to elements mentioned in the claims, they don’t change the meaning or breadth of the claim. They serve as a helpful cross-reference tool but don’t limit or expand the claim’s coverage.
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The MPEP 2141.01(a) outlines two distinct tests for determining whether a reference qualifies as analogous art:
- Same Field of Endeavor Test: This test focuses on whether the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem.
- Reasonably Pertinent Test: This test examines whether the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention.
The MPEP emphasizes: “Note that ‘same field of endeavor’ and ‘reasonably pertinent’ are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.”
It’s important to note that a reference only needs to satisfy one of these tests to be considered analogous art. This allows for a broader consideration of prior art that may be relevant to the claimed invention.
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No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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The improvement analysis in Step 2A Prong Two differs from the analysis in Step 2B in a key aspect: consideration of what is well-understood, routine, and conventional activity.
According to the MPEP:
“Specifically, the ‘improvements’ analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity.”
This means that in Step 2A Prong Two:
- The focus is on whether the claim integrates the judicial exception into a practical application.
- The claim may demonstrate an improvement to existing technology even if it does not improve on well-understood, routine, conventional activity.
In contrast, Step 2B considers whether the additional elements amount to significantly more than the judicial exception, which can include an analysis of what is well-understood, routine, and conventional in the field.
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Can patent drawings be used to determine specific dimensions or proportions?
Generally, patent drawings cannot be relied upon to determine specific dimensions or proportions unless explicitly stated to be to scale. According to MPEP 2125:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
However, there are exceptions:
- If the drawing is expressly labeled as being to scale, measurements can be relied upon.
- The overall proportions and relative sizes of elements may be considered if they would be apparent to a person of ordinary skill in the art.
- Specific features clearly shown in the drawings can be used as prior art, even if dimensions are not given.
It’s important to note that while exact measurements are typically not reliable, the drawings can still be used in combination with the written description to determine what would be reasonably taught to one skilled in the art.
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What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
This principle is crucial in evaluating the obviousness of a claimed invention. According to MPEP 2143.01(V):
“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”
This means that when considering whether to combine or modify prior art references to reject a claim as obvious, the examiner must ensure that the proposed changes do not undermine the fundamental purpose or functionality of the original reference. If the modification would make the prior art inoperable or unsuitable for its primary intended use, then the motivation to combine is likely lacking.
Key points to consider:
- The intended purpose of the prior art must be clearly understood
- The impact of the proposed modification on that purpose must be carefully evaluated
- If the modification renders the prior art unsuitable, it weighs against obviousness
- This principle can be a strong argument against an obviousness rejection
Examiners should provide a detailed explanation of how the proposed modification maintains or enhances the prior art’s functionality. Conversely, applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would render a reference unsatisfactory for its intended purpose.
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For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states:
If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective filing date is the earlier of: (1) the filing date of the earliest application in which the subject matter is described; or (2) the actual filing date of the patent or application under examination.
This means that for foreign priority claims, the USPTO will examine the foreign application to ensure it adequately describes the claimed subject matter. If it does, the foreign filing date becomes the effective filing date for that subject matter.
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The “In re Wertheim” case is significant in patent law, particularly regarding claim amendments and written description requirements. The MPEP 2163.05 cites this case:
“In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of ‘25%- 60%’ and specific examples of ‘36%’ and ‘50%.’ A corresponding new claim limitation to ‘35%-60%’ did not meet the description requirement because the phrase ‘25% to 60%’ relates to a range of specific temperature range of 35°C to 60°C.”
This case established that when amending claims to include new range limitations, the new range must be clearly supported by the original disclosure. It’s not enough for the new range to fall within a broader disclosed range; there must be specific support for the endpoints of the new range.
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Enabling prior art for compounds and compositions must allow one of ordinary skill in the art to make or synthesize the compound. As stated in MPEP 2121.02:
“Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound.”
This means that simply mentioning a compound’s name in a reference is not enough to make it enabling prior art. There must be sufficient information for someone skilled in the field to actually produce the compound.
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The USPTO handles translation errors in foreign priority documents for international design applications as follows:
- If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error.
- However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.
This approach is outlined in MPEP 2920.05(d), which states:
“Where an error in the translation of the foreign priority document is only discovered after publication of the international registration, the Office will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration in any review of the foreign priority claim.”
It’s important for applicants to ensure accurate translations are provided initially to avoid potential issues later in the application process.
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Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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Yes, an assignment can serve as an inventor’s oath or declaration under certain conditions. According to 37 CFR 1.63(e):
An assignment may also serve as an oath or declaration required by this section if the assignment as executed: (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
This provision implements 35 U.S.C. 115(e). To use an assignment as an oath or declaration:
- The assignment must include all required information and statements of a standard oath or declaration
- It must be executed by the inventor who is under the obligation of assignment
- A copy of the assignment must be recorded with the USPTO
Applicants should use a check-box on the assignment cover sheet to indicate the dual purpose of the document.
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The signature requirements for inventor’s oaths or declarations are as follows:
- There is no requirement for a signature to be made in any particular manner.
- Inventors can use titles such as ‘Dr.’ in their signatures, but these won’t appear in the printed patent.
- Non-English character signatures are accepted.
- If an inventor cannot write, their mark must be witnessed.
According to MPEP § 602.08(b), “There is no requirement that a signature be made in any particular manner.” The section also states, “It is permissible for an applicant to use a title of nobility or other title, such as ‘Dr.’, in connection with their signature. The title will not appear in the printed patent.“
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No, a licensee of exclusive right cannot prosecute a patent application. According to MPEP 106.01, only the assignee of record of the entire interest has the right to intervene in the prosecution of an application. The MPEP states:
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […], an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.
This means that while a licensee of exclusive right can inspect the application, they cannot prosecute it or exclude the applicant from the prosecution process.
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Failure to pay a maintenance fee on time can result in the expiration of the patent. According to MPEP 2506:
“A patent that expires for failure of payment will expire on the day following the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.”
The expiration occurs even if the last day for payment falls on a weekend or holiday. The MPEP clarifies:
“For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired after midnight on Saturday (e.g., on Sunday) if the maintenance fee and surcharge were not paid on the following Monday.”
It’s crucial for patent owners to be aware of these deadlines and ensure timely payment to maintain their patent rights.
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Patent examiners evaluate reasonable expectation of success in obviousness rejections by considering various factors outlined in MPEP 2143.02. The evaluation process involves assessing the prior art, the nature of the problem to be solved, and the knowledge of a person of ordinary skill in the art (POSA).
Key points in the examiner’s evaluation include:
- Prior Art Teachings: Examiners consider the specificity and relevance of prior art teachings to the claimed invention.
- Predictability of the Art: The level of predictability in the relevant field is taken into account.
- Scope of the Claims: The breadth of the claims is considered in relation to the prior art teachings.
- Nature of the Invention: The complexity and technological area of the invention are evaluated.
The MPEP provides guidance on the standard for reasonable expectation of success:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
Examiners must provide a rationale for why a POSA would have had a reasonable expectation of success. This rationale should be based on evidence from the prior art, common knowledge in the field, and logical reasoning. If an applicant provides evidence of unexpected results or teaching away in the prior art, examiners must consider this in their evaluation of reasonable expectation of success.
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A claim should be rejected under 35 U.S.C. 112(a) for lack of written description when the subject matter is not shown in the drawing or described in the description, and the words of the original claim do not sufficiently describe the invention. The MPEP 608.01(l) states: “If the claim does not provide its own description in this case, the claim should be rejected under 35 U.S.C. 112(a) as failing to be supported by an adequate written description.” This means that the claim must provide enough detail for one of ordinary skill in the art to recognize that the inventor had possession of the full scope of the claimed invention.
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How does MPEP 2144.04 address reversal, duplication, or omission of parts in patent applications?
MPEP 2144.04 addresses reversal, duplication, and omission of parts in patent applications through specific subsections:
- Reversal of Parts (VI)(A): “The mere reversal of the working parts of a device involves only routine skill in the art.” – In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)
- Duplication of Parts (VI)(B): “The mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” – In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
- Omission of an Element and Its Function (II)(A): “The omission of an element and its function is obvious if the function of the element is not desired.” – Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)
These legal precedents suggest that reversing, duplicating, or omitting parts in a device or process is generally not considered patentable unless it produces a new and unexpected result or solves a specific problem in a non-obvious way. Patent examiners may use these rationales to reject claims that merely involve such modifications without demonstrating a significant improvement or unexpected outcome.
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For a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2), it must meet specific requirements. According to MPEP 2154.01(a):
“AIA 35 U.S.C. 102(a)(2) sets forth three descriptions of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.”
The requirements for a WIPO published application to be prior art under this section are:
- It must be published under the Patent Cooperation Treaty (PCT)
- It must designate the United States
- It must be published in English
If these conditions are met, the WIPO published application can be used as prior art from its effective filing date, even if that date is before the application’s publication date.
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A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in MPEP 2133.03(e):
“The question posed by the experimental use doctrine is ‘whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
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How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:
- Multiple partial assignees of the patent property
- Multiple inventors who have not assigned their rights
- A combination of partial assignee(s) and inventor(s) who have not assigned their rights
In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.
“Patentably indistinct claims” in the context of interfering applications refer to claims from different applications that are substantially similar or overlapping in scope. According to MPEP 2304.01(d):
“Interfering claims of applications with either the same assignee or the same inventive entity are ‘patentably indistinct claims’ within the meaning of 37 CFR 1.78(f).”
These claims are typically subject to consolidation or restriction requirements to streamline the examination process and address potential interferences efficiently.
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Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature. The Manual of Patent Examining Procedure (MPEP) Section 2106.04(b) states:
“The law of nature and natural phenomenon exceptions reflect the Supreme Court’s view that the basic tools of scientific and technological work are not patentable, because the ‘manifestations of laws of nature’ are ‘part of the storehouse of knowledge,’ ‘free to all men and reserved exclusively to none.’”
This means that fundamental scientific principles and naturally occurring things are not eligible for patent protection.
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If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:
‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’
The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on error correction, visit: error correction.
For more information on patent issuance, visit: patent issuance.
For more information on reissue, visit: reissue.
How does the USPTO handle new matter in continuation applications?
The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:
“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”
This means that:
- Continuation applications must be based entirely on the disclosure of the parent application
- Any new subject matter introduced in a continuation application will be rejected as new matter
- If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)
CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.
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Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?
Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:
“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”
However, it’s important to note that for a CIP application:
- New matter in the CIP will only get the benefit of the CIP’s filing date.
- Matter disclosed in the prior application(s) can claim the earlier filing date(s).
- Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.
For more details, see MPEP 211.01 and MPEP 201.08.
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- continuation-in-part
- CIP
- multiple prior applications
- 35 U.S.C. 120
- 35 U.S.C. 121
- 35 U.S.C. 365(c)
- 35 U.S.C. 386(c)
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Yes, a nonprovisional application can be filed by reference to a previously filed application under certain conditions:
- The application must be filed on or after December 18, 2013
- A reference to the previously filed application must be made in an application data sheet
- The reference must indicate that the specification and any drawings of the new application are replaced by the reference
- The reference must specify the previously filed application by application number, filing date, and intellectual property authority
The USPTO states: As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.
However, the USPTO cautions: Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.
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Can the inventor’s oath or declaration be submitted after filing the patent application?
Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:
“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”
However, it’s important to note:
- The application must still name each inventor at the time of filing
- An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
- The oath or declaration should be submitted no later than the date on which the issue fee is paid
Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.
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According to MPEP 602.06, non-English oaths or declarations must meet specific requirements:
- The oath or declaration must be in a language the individual can understand.
- It must state that the individual understands the content of any related documents.
- Unless provided by the USPTO or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation.
- A statement confirming the translation’s accuracy is required.
As stated in the MPEP: “37 CFR 1.69 requires that oaths and declarations be in a language which is understood by the individual making the oath or declaration, i.e., a language which the individual comprehends.”
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Can I file a provisional application in a language other than English?
Yes, you can file a provisional application in a language other than English. However, there are important considerations:
- The USPTO accepts provisional applications in any language.
- An English translation is not required at the time of filing.
- If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.
The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.
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The critical date is a crucial concept in pre-AIA 35 U.S.C. 102(b) rejections. It is defined as one year before the effective U.S. filing date of the patent application. The significance of the critical date lies in its role as a cutoff point for determining whether prior art can be used against a patent application.
According to the MPEP:
The critical date is the date one year prior to the effective filing date of the application. Any printed publication having a date earlier than the critical date is a potential reference under pre-AIA 35 U.S.C. 102(b) against the claimed invention.
Source: MPEP 2133.02(a)
The critical date is important because:
- Any public disclosure, sale, or use of the invention before the critical date can be used as prior art against the application.
- It sets a time limit for inventors to file their patent applications after public disclosure.
- It helps determine the validity of potential prior art references in rejections.
Understanding the critical date is essential for both patent examiners and applicants in assessing the patentability of an invention under pre-AIA 35 U.S.C. 102(b).
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No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
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Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
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The accessibility of foreign patents is crucial in determining their use as prior art. Even if a foreign patent is difficult to access, it may still be considered prior art if it’s publicly available. The MPEP 2126 cites the case of In re Carlson, which states:
“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”
This means that even if a foreign patent is difficult to access due to geographical or linguistic barriers, it can still be considered prior art if it’s technically available to the public.
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When submitting replacement drawing sheets for patent applications, applicants should ensure the following:
- Include all figures from the immediate prior version of the sheet, even if only one figure is being amended.
- Label the sheet as ‘Replacement Sheet’ in the top margin.
- Include the application number and art unit in the upper center margin.
- Do not label amended drawing figures as ‘amended’.
- Remove canceled figures and renumber remaining figures if necessary.
The MPEP 608.02(b) states:
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as ‘amended.’
Additionally, a marked-up copy of the replacement sheet with annotations indicating changes may be required.
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“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
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According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
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The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus.
The MPEP states:
“A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”
This means that:
- If a prior art reference clearly names a species that falls within the claimed genus, the genus claim is anticipated.
- The anticipation stands even if the prior art reference discloses multiple species.
- However, if the prior art only discloses a genus without specifically naming the claimed species, it may not anticipate the species claim.
Patent examiners must carefully evaluate the prior art disclosures to determine whether they explicitly or implicitly teach the claimed species within a genus.
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To file a continuation-in-part (CIP) application, several requirements must be met according to MPEP 201.08 and 37 CFR 1.78:
- The CIP must be filed while the prior nonprovisional application is still pending (before patenting, abandonment, or termination of proceedings).
- The CIP must claim benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
- The CIP must contain a specific reference to the prior application, including the application number.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
- The CIP must have at least one common inventor with the prior application.
It’s important to note that a CIP can only be filed under 37 CFR 1.53(b) and cannot be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
For more information on filing requirements, visit: filing requirements.
For more information on USPTO, visit: USPTO.
What is the filing deadline for a continuation application?
A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. 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.”
Key points to remember:
- There is no specific time limit for filing a continuation as long as the parent application is still pending.
- The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
- If you want to file after the parent is patented, you must file a reissue application instead.
It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.
For more information on continuation application, visit: continuation application.
For more information on filing deadline, visit: filing deadline.
How does the USPTO determine if a negative limitation has written description support?
The USPTO examines negative limitations for written description support based on the guidance provided in MPEP 2173.05(i). The key factors include:
- Express disclosure in the specification
- Inherent disclosure based on what is described
- Original claims
- Drawings that show the absence of a feature
The MPEP states: “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” This means that the negative limitation must be supported by the original specification, either explicitly or implicitly.
For example, if the specification describes a composition “without additive X,” a claim limitation stating “wherein the composition is free of additive X” would likely have sufficient support. However, introducing a negative limitation that was not contemplated in the original disclosure could be considered new matter and rejected under 35 U.S.C. 112(a).
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How does the Internet affect the determination of printed publications in patent law?
The Internet has significantly impacted the concept of printed publications in patent law. According to MPEP 2152.02(b):
“A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
In the context of the Internet, this means:
- Websites and online documents can qualify as printed publications.
- The date a webpage becomes publicly available can be crucial in determining its status as prior art.
- Archived versions of websites (e.g., through the Wayback Machine) may be used to establish publication dates.
- Social media posts, blog entries, and online articles can potentially serve as printed publications.
However, challenges may arise in proving the exact publication date and content of online materials. Patent examiners and courts may require evidence to verify the public accessibility and content of Internet-based references at a specific point in time.
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What is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves:
- Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail)
- Reasonable time intervals between attempts
- Documenting all contact attempts and responses (or lack thereof)
- Exploring alternative contact methods if initial attempts fail
The MPEP 409.03(d) states: ‘Where inability to find or reach a nonsigning inventor ‘after diligent effort’ is the reason for filing under pre-AIA 37 CFR 1.47(b), a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.’ This emphasizes the importance of thoroughly documenting all efforts made to contact the inventor.
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Product (1)
An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
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Routine (1)
“Well-understood, routine, conventional activity” is an important consideration in the patent eligibility analysis, specifically in Step 2B of the eligibility analysis. According to MPEP 2106.05(d), this refers to additional element(s) in a claim that are no more than well-understood, routine, conventional activities previously known to the industry, which are recited at a high level of generality.
The MPEP states: “If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.”
It’s important to note that even if an element is well-understood, routine, and conventional when considered individually, a combination of such elements may still amount to significantly more than the judicial exception, potentially making the claim eligible.
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Second Paragraph (3)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims.
According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10, 7.34.12 through 7.34.15, 7.35, and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
These form paragraphs cover a range of issues, from failure to claim the inventor’s invention to the use of relative terms or trademarks in claims.
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The MPEP addresses claims that omit essential elements or steps through form paragraphs 7.34.12 (for omitted steps) and 7.34.13 (for omitted elements). These paragraphs are used when the omission of essential elements or steps renders a claim incomplete and thus indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For omitted steps, form paragraph 7.34.12 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]
For omitted elements, form paragraph 7.34.13 states:
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]
When using these form paragraphs, examiners are instructed to recite the omitted steps or elements and provide a rationale for considering them critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter as essential to the invention.
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Sixth Paragraph (1)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
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Sixth Paragraph Limitation (2)
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
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For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
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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.
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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.
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