Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
Topics:
MPEP 2100 – Patentability,
MPEP 2113 – Product – By – Process Claims,
Patent Law,
Patent Procedure