Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
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.
To learn more:
MPEP 2100 – Patentability (3)
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.
To learn more:
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.
To learn more:
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.
To learn more:
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.
To learn more:
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.
To learn more:
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.
To learn more:
Patent Law (3)
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.
To learn more:
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.
To learn more:
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.
To learn more:
Patent Procedure (3)
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.
To learn more:
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.
To learn more:
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.
To learn more:
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.
To learn more: