Question 1

What is voluntary arbitration in patent disputes?

Accepted Answer

Voluntary arbitration in patent disputes is a process outlined in 35 U.S.C. 294 where parties can agree to settle disputes related to patent validity or infringement through arbitration. The law states:

'A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract.'

This allows parties to resolve patent-related conflicts outside of the court system, potentially saving time and resources.

Question 2

What is the significance of 35 U.S.C. 301 in citing prior art?

Accepted Answer

What is the significance of 35 U.S.C. 301 in citing prior art?

35 U.S.C. 301 plays a crucial role in the citation of prior art for patents. According to MPEP 707.05:

'Availability of newly discovered references should be reported to the examiner even though the application is allowed or in issue.'

This statute allows any person to submit prior art patents or publications relevant to a patent's validity. Key points include:

Submissions can be made at any time during a patent's enforceability.
The person submitting may provide a concise explanation of the relevance.
The identity of the person submitting may remain confidential upon request.

This provision enhances the quality of issued patents by allowing continuous updating of relevant prior art, even after a patent has been granted. It's an important tool for both examiners and the public in maintaining the integrity of the patent system.

To learn more:

35 U.S.C. 301

Question 3

What is the presumption of operability in patent law?

Accepted Answer

The presumption of operability is a legal concept in patent law that assumes every patent is valid and operable. This is based on 35 U.S.C. 282, which states that patents are presumed valid. The MPEP section 716.07 elaborates on this, stating:

'Since every patent is presumed valid (35 U.S.C. 282), and since that presumption includes the presumption of operability (Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935), examiners should not express any opinion on the operability of a patent.'

This means that patent examiners and others challenging a patent must assume that the patented invention works as described unless proven otherwise.

To learn more:

Question 4

What happens if a prior-filed application lacks adequate written description for a claimed invention?

Accepted Answer

If a prior-filed application lacks adequate written description for a claimed invention, the following consequences may occur:

The claim in the later-filed application will not be entitled to the benefit of the filing date of the prior-filed application for that invention.
The effective filing date for the claimed invention will be the filing date of the later-filed application.
This may impact the patent's validity if intervening prior art exists between the filing dates of the prior-filed and later-filed applications.

As stated in MPEP 211.05:

To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.

This emphasizes the importance of ensuring that the prior-filed application contains a complete and detailed disclosure of the claimed invention.

To learn more:

Question 5

What effect do inoperative features have on a patent's validity as prior art?

Accepted Answer

Inoperative features in a patent do not necessarily invalidate its use as prior art. MPEP 716.07 clarifies this point:

'Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative.'

This means that even if certain aspects of a patent are shown to be inoperative, the patent can still be used as prior art for its operative features. When challenging a patent's use as prior art, it's crucial to focus on the specific features being relied upon in the rejection or citation.

To learn more:

Question 6

What are the consequences of not filing an IDS or submitting an incomplete IDS?

Accepted Answer

What are the consequences of not filing an IDS or submitting an incomplete IDS?

Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences:

Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct.
Patent Invalidity: The patent may be held unenforceable if material information was intentionally withheld.
Prosecution History Estoppel: Failure to disclose prior art may limit the scope of patent claims in future litigation.

MPEP 609 states: "The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by 37 CFR 1.97(b)-(d) and 1.98."

It's crucial to file a complete and timely IDS to avoid these potential pitfalls and ensure the validity and enforceability of your patent.

To learn more:

Question 7

What are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?

Accepted Answer

Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences.

MPEP ¶ 2.33 states: "Otherwise, the inventorship in the CPA shall be the same as in the prior application." This means that without a proper 37 CFR 1.48 request:

The new inventor will not be officially recognized on the application.
The inventorship will remain unchanged from the prior application.
This discrepancy could potentially affect the validity of the patent if granted.
It may lead to complications in future patent proceedings or enforcement efforts.

It's crucial to follow proper procedures to ensure all inventors are correctly listed and legally recognized on the patent application.

For more information on CPA, visit: CPA.

For more information on patent validity, visit: patent validity.

Question 8

What are the consequences of failing to comply with the inventor's oath or declaration requirements?

Accepted Answer

Failing to comply with the inventor's oath or declaration requirements can have serious consequences for a patent application or an issued patent. However, the America Invents Act (AIA) introduced some provisions to mitigate these consequences. According to 35 U.S.C. 115(h)(3):

A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).

This means that:

A patent will not be automatically invalidated or rendered unenforceable due to defects in the oath or declaration
The applicant or patentee has the opportunity to remedy any deficiencies in the oath or declaration

However, it's important to note that while this provision provides some protection, it's still crucial to comply with the oath or declaration requirements to avoid potential issues or delays in the patent prosecution process. Failure to provide a proper oath or declaration can result in:

Delays in the examination process
Increased costs due to the need for corrections or additional filings
Potential challenges to the validity of the patent in litigation

Therefore, applicants should make every effort to ensure that the inventor's oath or declaration is properly executed and contains all required information and statements as specified in 37 CFR 1.63 and 35 U.S.C. 115.

To learn more:

Question 9

How long is a provisional patent application valid?

Accepted Answer

A provisional patent application has a limited lifespan. According to MPEP 201.04:

"A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5)."

However, there is a provision for extending this period in certain circumstances:

"The period of pendency of a provisional application is extended to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and 37 CFR 1.7(b)."

It's crucial to file a nonprovisional application claiming the benefit of the provisional application within this 12-month period to maintain the priority date.

For more information on patent validity, visit: patent validity.

For more information on provisional patent, visit: provisional patent.

For more information on USPTO, visit: USPTO.

Patent Law FAQ

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (3)

What happens if a prior-filed application lacks adequate written description for a claimed invention?

What are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?

How long is a provisional patent application valid?

MPEP 201 - Types of Applications (2)

What are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?

How long is a provisional patent application valid?

MPEP 300 - Ownership and Assignment (1)

What is voluntary arbitration in patent disputes?

MPEP 311 - Filing of Notice of Arbitration Awards (1)

What is voluntary arbitration in patent disputes?

Patent Law (6)

What is voluntary arbitration in patent disputes?

What happens if a prior-filed application lacks adequate written description for a claimed invention?

What are the consequences of not filing an IDS or submitting an incomplete IDS?

What are the consequences of not filing an IDS or submitting an incomplete IDS?

What are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?

What are the consequences of failing to comply with the inventor’s oath or declaration requirements?

How long is a provisional patent application valid?

Patent Procedure (6)

What is voluntary arbitration in patent disputes?

What happens if a prior-filed application lacks adequate written description for a claimed invention?

What are the consequences of not filing an IDS or submitting an incomplete IDS?

What are the consequences of not filing an IDS or submitting an incomplete IDS?

What are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?

What are the consequences of failing to comply with the inventor’s oath or declaration requirements?

How long is a provisional patent application valid?