Patent Law FAQ

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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.

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.

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.

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.

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.

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.

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

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.

To learn more:

• Utility requirement
• Patent law
• USPTO guidelines
• Specific utility
• Substantial utility
• Credible utility

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.

To learn more:

• best mode requirement
• public disclosure
• patent law
• technological progress
• invention implementation

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.

To learn more:

• reduction to practice
• inventorship
• conception
• patent law

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.

To learn more:

• enabling disclosure
• prior art
• anticipation
• patent law

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.

To learn more:

• Art Recognized Suitability
• Obviousness
• Patent Law
• Material Selection
• Intended Use

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:

1. Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
2. Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
3. 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.

To learn more:

• on sale
• public use
• prior art
• patent law
• statutory bars

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.

To learn more:

• effective filing date
• reissue application
• AIA
• patent law

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:

• reduction to practice
• evidence
• patent law
• invention documentation
• corroboration

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.

To learn more:

• In re Elsner
• plant patents
• statutory bar
• foreign sales
• patent law

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.

To learn more:

• experimental use
• patent law
• invention testing
• factors

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.

To learn more:

• collaboration
• joint inventorship
• patent law
• invention process

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.

To learn more:

• pre-AIA 35 U.S.C. 102(g)
• prior art
• invention location
• patent law

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.

To learn more:

• ready for patenting
• public use
• patent law
• MPEP 2133.03(c)

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.

To learn more:

• Utility requirement
• Patent law
• USPTO guidelines
• Specific utility
• Substantial utility
• Credible utility

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.

To learn more:

• reduction to practice
• inventorship
• conception
• patent law

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.

To learn more:

• collaboration
• joint inventorship
• patent law
• invention process

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.

To learn more:

• enabling disclosure
• prior art
• anticipation
• patent law

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.

To learn more:

• In re Elsner
• plant patents
• statutory bar
• foreign sales
• patent law

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.

To learn more:

• ready for patenting
• public use
• patent law
• MPEP 2133.03(c)

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.

To learn more:

• experimental use
• patent law
• invention testing
• factors

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.

To learn more:

• pre-AIA 35 U.S.C. 102(g)
• prior art
• invention location
• patent law

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:

• reduction to practice
• evidence
• patent law
• invention documentation
• corroboration

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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.

To learn more:

• Art Recognized Suitability
• Obviousness
• Patent Law
• Material Selection
• Intended Use

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.

To learn more:

• effective filing date
• reissue application
• AIA
• patent law

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:

1. Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
2. Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
3. 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.

To learn more:

• on sale
• public use
• prior art
• patent law
• statutory bars

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.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

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.

To learn more:

• best mode requirement
• public disclosure
• patent law
• technological progress
• invention implementation

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.

To learn more:

• SNQ
• Substantial New Question of Patentability
• ex parte reexamination
• appeal
• patent law

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.

To learn more:

• SNQ
• Substantial New Question of Patentability
• ex parte reexamination
• appeal
• patent law

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.

To learn more:

• interference
• patent law
• MPEP
• USPTO
• patent examination

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.

To learn more:

• interference
• patent law
• MPEP
• USPTO
• patent examination

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

• international design applications
• time limits
• Hague Agreement
• unintentional delay
• patent law

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:

• international design applications
• time limits
• Hague Agreement
• unintentional delay
• patent law

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.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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.

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.

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.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

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.

To learn more:

• Utility requirement
• Patent law
• USPTO guidelines
• Specific utility
• Substantial utility
• Credible utility

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.

To learn more:

• best mode requirement
• public disclosure
• patent law
• technological progress
• invention implementation

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.

To learn more:

• reduction to practice
• inventorship
• conception
• patent law

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.

To learn more:

• interference
• patent law
• MPEP
• USPTO
• patent examination

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.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

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.

To learn more:

• enabling disclosure
• prior art
• anticipation
• patent law

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.

To learn more:

• Art Recognized Suitability
• Obviousness
• Patent Law
• Material Selection
• Intended Use

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

1. Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
2. Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
3. 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.

To learn more:

• on sale
• public use
• prior art
• patent law
• statutory bars

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.

To learn more:

• effective filing date
• reissue application
• AIA
• patent law

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.

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:

• reduction to practice
• evidence
• patent law
• invention documentation
• corroboration

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.

To learn more:

• In re Elsner
• plant patents
• statutory bar
• foreign sales
• patent law

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.

To learn more:

• SNQ
• Substantial New Question of Patentability
• ex parte reexamination
• appeal
• patent law

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.

To learn more:

• experimental use
• patent law
• invention testing
• factors

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:

• international design applications
• time limits
• Hague Agreement
• unintentional delay
• patent law

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.

To learn more:

• collaboration
• joint inventorship
• patent law
• invention process

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.

To learn more:

• pre-AIA 35 U.S.C. 102(g)
• prior art
• invention location
• patent law

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.

To learn more:

• ready for patenting
• public use
• patent law
• MPEP 2133.03(c)

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:

• result-effective variable
• patent law
• obviousness
• optimization
• KSR

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:

• obviousness
• obvious to try
• KSR
• patent law
• optimization

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:

• criticality
• obviousness
• patent law
• ranges
• unexpected results

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.

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.

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.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

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.

To learn more:

• Utility requirement
• Patent law
• USPTO guidelines
• Specific utility
• Substantial utility
• Credible utility

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.

To learn more:

• best mode requirement
• public disclosure
• patent law
• technological progress
• invention implementation

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.

To learn more:

• reduction to practice
• inventorship
• conception
• patent law

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.

To learn more:

• interference
• patent law
• MPEP
• USPTO
• patent examination

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.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

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.

To learn more:

• enabling disclosure
• prior art
• anticipation
• patent law

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.

To learn more:

• Art Recognized Suitability
• Obviousness
• Patent Law
• Material Selection
• Intended Use

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:

• patent term adjustment
• third-party submissions
• USPTO procedures
• patent law

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:

1. Commercial Intent: ‘On sale’ typically involves commercial transactions or offers, while ‘public use’ may not have a commercial aspect.
2. Visibility: An invention can be ‘on sale’ without being visible to the public, whereas ‘public use’ generally implies some level of public accessibility.
3. 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.

To learn more:

• on sale
• public use
• prior art
• patent law
• statutory bars

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.

To learn more:

• effective filing date
• reissue application
• AIA
• patent law

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.

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:

• reduction to practice
• evidence
• patent law
• invention documentation
• corroboration

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.

To learn more:

• In re Elsner
• plant patents
• statutory bar
• foreign sales
• patent law

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.

To learn more:

• SNQ
• Substantial New Question of Patentability
• ex parte reexamination
• appeal
• patent law

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.

To learn more:

• experimental use
• patent law
• invention testing
• factors

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:

• international design applications
• time limits
• Hague Agreement
• unintentional delay
• patent law

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.

To learn more:

• collaboration
• joint inventorship
• patent law
• invention process

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.

To learn more:

• pre-AIA 35 U.S.C. 102(g)
• prior art
• invention location
• patent law

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.

To learn more:

• ready for patenting
• public use
• patent law
• MPEP 2133.03(c)