Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
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.
To learn more:
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.
To learn more:
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.
To learn more:
MPEP 2113 – Product – By – Process Claims (1)
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.
To learn more:
Patent Law (2)
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.
To learn more:
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.
To learn more:
Patent Procedure (2)
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.
To learn more:
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.
To learn more: