Question 1

What information from copending U.S. patent applications needs to be disclosed?

Accepted Answer

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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Question 2

What is considered 'material to patentability' according to the USPTO?

russ.krajec@blueironip.com · Accepted Answer

Information is considered 'material to patentability' when it meets specific criteria outlined in MPEP 724 and 37 CFR 1.56(b). The USPTO defines it as follows:

Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

This definition applies regardless of whether the information is classified as a trade secret, proprietary material, or subject to a protective order. If it meets these criteria, it must be disclosed to the USPTO.

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Question 3

How does litigation affect the processing of reissue applications?

Accepted Answer

Litigation can significantly impact the processing of reissue applications. According to MPEP 1442, "reissue applications involved in litigation will be taken up for action in advance of other reissue applications." This means that:

Reissue applications involved in litigation receive even higher priority than other reissue applications.
The USPTO aims to address these applications quickly to support ongoing legal proceedings.
However, in some cases, litigation may also cause a reissue application to be suspended, depending on the specific circumstances of the case.

It's important to note that the exact handling of a reissue application involved in litigation may depend on various factors and could be subject to case-by-case consideration by the USPTO.

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Question 4

When does the USPTO withdraw a restriction requirement?

Accepted Answer

The USPTO withdraws a restriction requirement when certain conditions are met during the examination process. According to MPEP 821.04(a):

"Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim."

This means that when a generic claim, linking claim, or subcombination claim becomes allowable, the restriction requirement is withdrawn for any previously withdrawn claims that depend on or require all the limitations of the allowable claim.

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Question 5

What is rejoinder in patent examination?

Accepted Answer

Rejoinder is a process in patent examination where previously withdrawn claims are reconsidered for patentability when the elected invention is found allowable. According to MPEP 821.04, "Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits."

The key points about rejoinder are:

It occurs when all claims to the elected invention are in condition for allowance
The nonelected invention(s) must be considered for rejoinder
To be eligible for rejoinder, a nonelected claim must depend from or require all limitations of an allowable claim
Rejoined claims must meet all criteria for patentability

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Question 6

What is a Corrected Notice of Allowance in patent examination?

Accepted Answer

A Corrected Notice of Allowance is a document issued by patent examiners to address certain issues that arise after a patent application has been allowed. According to MPEP 1309.02:

"A Corrected Notice of Allowance is used when correction of the issue requires the mailing of any document to the applicant besides a Response to Rule 312 Communication or those related to a Quick Path IDS."

This document is used to communicate changes or corrections to the applicant that are necessary before the patent can be issued. It's one of the ways examiners resolve Printer Rush cases, ensuring all details are accurate and complete prior to publication.

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Question 7

What is the difference between an election with traverse and without traverse?

Accepted Answer

The key differences between an election with traverse and without traverse are:

Election with Traverse	Election without Traverse
Applicant challenges the restriction requirement Preserves right to petition Requires examiner to respond to arguments May lead to withdrawal of restriction	Applicant accepts the restriction requirement Waives right to petition Simplifies examination process Restriction becomes final

MPEP 818.01(a) states:

"If applicant does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse."

This means that a clear and specific traversal is necessary to maintain the right to petition and to require the examiner to reconsider the restriction requirement. An election without traverse, on the other hand, simplifies the process but limits the applicant's options for challenging the restriction later in the examination.

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Question 8

How are timely submitted affidavits and declarations handled by the patent examiner?

Accepted Answer

When affidavits or declarations under 37 CFR 1.130 are timely submitted and admitted, the patent examiner is required to acknowledge and comment on them in the next office action. According to MPEP 717.01(f):

All admitted affidavits and declarations are acknowledged and commented upon by the examiner in the next succeeding action, and an indication of such should be made on the Office Action Summary, Notice of Allowability, or Advisory Action cover sheet, as appropriate.

This means that:

The examiner must review and consider the content of the affidavit or declaration
The examiner's response to the affidavit or declaration will be included in the next office action
The examiner should indicate that the affidavit or declaration has been considered on the appropriate form (Office Action Summary, Notice of Allowability, or Advisory Action cover sheet)

This process ensures that all timely submitted evidence is properly considered and addressed during the patent examination process.

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Question 9

What is the burden of proof in product-by-process claim rejections?

Accepted Answer

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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Question 10

What are the Graham factors in patent obviousness analysis?

Accepted Answer

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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Question 11

What is the role of "interchangeability" in determining equivalence?

Accepted Answer

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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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2000 – Duty Of Disclosure (1)

What information from copending U.S. patent applications needs to be disclosed?

MPEP 2001.06 – Sources Of Information Under 37 Cfr 1.56 (1)

What information from copending U.S. patent applications needs to be disclosed?

MPEP 2100 – Patentability (3)

What is the burden of proof in product-by-process claim rejections?

What are the Graham factors in patent obviousness analysis?

What are the Graham factors in patent obviousness analysis?

What is the role of “interchangeability” in determining equivalence?

MPEP 2113 – Product – By – Process Claims (1)

What is the burden of proof in product-by-process claim rejections?

MPEP 2141 – Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103 (1)

What are the Graham factors in patent obviousness analysis?

What are the Graham factors in patent obviousness analysis?

MPEP 2183 – Making A Prima Facie Case Of Equivalence (1)

What is the role of “interchangeability” in determining equivalence?

Patent Law (4)

What information from copending U.S. patent applications needs to be disclosed?

What is the burden of proof in product-by-process claim rejections?

What are the Graham factors in patent obviousness analysis?

What are the Graham factors in patent obviousness analysis?

What is the role of “interchangeability” in determining equivalence?

Patent Procedure (4)

What information from copending U.S. patent applications needs to be disclosed?

What is the burden of proof in product-by-process claim rejections?

What are the Graham factors in patent obviousness analysis?

What are the Graham factors in patent obviousness analysis?

What is the role of “interchangeability” in determining equivalence?