Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (1)
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.
To learn more:
MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (1)
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.
To learn more:
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (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 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:
Patent Law (2)
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.
To learn more:
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:
Patent Procedure (2)
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.
To learn more:
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: