Question 1

Where can I find information on rejections based on pre-AIA 35 U.S.C. 102?

Accepted Answer

For information specific to rejections based on pre-AIA 35 U.S.C. 102, you should refer to MPEP §§ 2132 - 2139.03. These sections provide comprehensive guidance on how to apply the various subsections of pre-AIA 35 U.S.C. 102 in patent examination.

It's important to note that pre-AIA 35 U.S.C. 102 applies to patent applications filed before March 16, 2013, which is when the America Invents Act (AIA) went into effect. For applications filed on or after this date, different rules apply under the AIA version of 35 U.S.C. 102.

To learn more:

35 U.S.C. 102

Question 2

When should prior art figures be included in a patent application?

Accepted Answer

Generally, prior art figures are discouraged in patent applications. As stated in MPEP 608.02(g), Figures showing the prior art are usually unnecessary and should be canceled. This principle is based on the decision in Ex parte Elliott, 1904 C.D. 103, 109 OG 1337 (Comm'r Pat. 1904).

However, there are exceptions to this rule. The MPEP states that prior art figures may be retained where needed to understand applicant's invention. In such cases, these figures must be clearly labeled as prior art.

To learn more:

Question 3

When is it necessary to inspect previously patented or abandoned application papers?

Accepted Answer

Inspecting previously patented or abandoned application papers is necessary in certain situations during patent examination. According to MPEP 711.04(b):

"In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application."

This inspection is crucial for understanding the prior art, examining related applications, or evaluating the scope of a reissue application.

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Question 4

When is a declaration under 37 CFR 1.130(b) not available?

Accepted Answer

A declaration under 37 CFR 1.130(b) is not available in certain situations. The MPEP outlines two specific cases:

If the disclosure was made more than one year before the effective filing date of the claimed invention.
When the disclosure applied in a rejection is a U.S. patent or U.S. patent application publication that claims an invention substantially the same as the applicant's claimed invention, and the affidavit contends that an inventor named in the U.S. patent or application derived the invention from the inventor named in the application or patent.

As stated in the MPEP: The provision of 37 CFR 1.130(b) is not available: (1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. [...] (2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.

To learn more:

37 CFR 1.130(b)

Question 5

When is a 37 CFR 1.131(a) affidavit appropriate in a patent application?

Accepted Answer

A 37 CFR 1.131(a) affidavit is appropriate when an applicant needs to antedate a reference cited against their patent application. Specifically, it's used to show prior invention before the effective date of the cited reference.

According to MPEP 715.01: "An affidavit or declaration under 37 CFR 1.131(a) may be used, in the context of a pending application or reexamination proceeding, to overcome certain prior art which qualifies as prior art under pre-AIA 35 U.S.C. 102."

Key points about when to use a 37 CFR 1.131(a) affidavit:

It's typically filed before final rejection
It's used to overcome references that qualify as prior art under pre-AIA 35 U.S.C. 102(a) or (e)
It cannot be used to overcome statutory bars under pre-AIA 35 U.S.C. 102(b)

To learn more:

37 CFR 1.131(a)

Question 6

When can a requirement for information be made during patent examination?

Accepted Answer

A requirement for information under 37 CFR 1.105 can be made at various stages of the patent examination process. According to MPEP 704.11(b):

"A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized."

The optimal timing for making such a requirement is typically:

Prior to or with the first action on the merits
With the first action on the merits that includes at least one rejection
After the first action on the merits, when justified by the application file

It's important to note that it is rarely appropriate to require information due to a lack of relevant prior art after the first action on the merits.

To learn more:

37 CFR 1.105

Question 7

What types of technical information can an examiner request during patent examination?

Accepted Answer

An examiner can request various types of technical information during patent examination, as outlined in MPEP 704.11(a). Some examples include:

Technical explanations of the invention
Details of how the invention is made or used
Specific utilities of the invention
Best mode of carrying out the invention
Copies of any non-patent literature relied upon

The MPEP states: 'Information reasonably necessary for finding prior art ... may include technical information ... such as copies of any non-patent literature relied upon by applicant in drafting the application.' This indicates that examiners can request a wide range of technical details to ensure a thorough examination.

To learn more:

Question 8

What types of prior art can be overcome with a 37 CFR 1.131(a) affidavit?

Accepted Answer

An affidavit or declaration under 37 CFR 1.131(a) can be used to overcome certain types of prior art rejections. Specifically, it can be used to overcome rejections based on:

Pre-AIA 35 U.S.C. 102(a) references
Pre-AIA 35 U.S.C. 102(e) references

MPEP 715 states:

37 CFR 1.131(a) affidavits are applicable to overcome rejections under pre-AIA 35 U.S.C. 102(a) or 102(e).

However, it's important to note that this affidavit cannot be used to overcome certain other types of prior art, such as those under 35 U.S.C. 102(b) or statutory bars.

To learn more:

Question 9

What types of information can the USPTO require under 37 CFR 1.105?

Accepted Answer

The USPTO can require a wide range of information under 37 CFR 1.105. According to MPEP 704.10, this may include:

Commercial databases relevant to the invention
Search history of prior art
Related non-patent literature, published applications, or patents
Information used to draft the application
Information used in the invention process
Identification of improvements
Known uses of the claimed invention
Technical information known to the applicant

The regulation states:

The examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter.

This broad authority allows examiners to request any information that they deem necessary for a thorough examination of the application.

To learn more:

Question 10

What types of information can an examiner require under MPEP 704.10?

Accepted Answer

What types of information can an examiner require under MPEP 704.10?

Under MPEP 704.10, an examiner can require various types of information from an applicant. These include:

Technical information known to the applicant concerning the invention
Commercial information regarding the invention or its development
Prior art that may be material to patentability
Factual information about the applicant's disclosure, such as dates of public use or sale
Information on related applications or publications

The MPEP states: "The examiner may require information to support the enablement, written description, or utility of an application." This broad scope allows examiners to gather necessary information for a thorough examination.

To learn more:

MPEP 704.10

Question 11

What types of information can an examiner request about prior art?

Accepted Answer

What types of information can an examiner request about prior art?

An examiner can request various types of information about prior art, including:

Copies of patents, publications, or other information products which the applicant has mentioned in the specification but has not submitted
Names of persons skilled in the art who have made written opinions or have presented oral opinions about the invention
Information about any use of the claimed invention by the applicant

According to MPEP 704.11, the examiner may also request:

'Where the applicant has stated that the claimed invention is a departure from the prior art, information about the closest prior art known to the applicant.'

This information helps the examiner conduct a thorough examination and assess the novelty and non-obviousness of the claimed invention.

To learn more:

Question 12

What types of information can an examiner request about prior art?

Accepted Answer

What types of information can an examiner request about prior art?

An examiner can request various types of information about prior art, including:

Copies of patents, publications, or other information about prior art cited in the application but not submitted in compliant form
Names of persons involved in developing the subject matter of the claims
Information about improvements and criticisms of prior art inventions
Distinguishing features of the claimed invention from the closest prior art

According to MPEP 704.11: 'Information reasonably necessary for finding prior art may include any facts showing conception, reduction to practice, or public use or sale, in this country.' This broad scope allows examiners to gather comprehensive information for evaluating patentability.

To learn more:

information requirements

Question 13

What types of evidence can be used in a 37 CFR 1.130(a) declaration?

Accepted Answer

Various types of evidence can be used in a 37 CFR 1.130(a) declaration to establish that a disclosure was made by the inventor or obtained from them. While the MPEP 717.01(a)(1) doesn't provide an exhaustive list, common types of evidence may include:

Emails or correspondence between the inventor and third parties
Laboratory notebooks or research records
Witness statements
Publication drafts or submission records
Presentation materials and records of public disclosures
Contracts or agreements related to the disclosure

The MPEP emphasizes that evidence is evaluated on a case-by-case basis:

The evidence necessary to show that the disclosure is by the inventor or a joint inventor or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor must be evaluated on a case-by-case basis.

It's important to provide clear and convincing evidence that links the inventor to the disclosure in question.

To learn more:

37 CFR 1.130(a)

Question 14

What types of activities can be used against claims in patent applications?

Accepted Answer

According to MPEP 715.01(d), various types of activities can be used against claims in patent applications. These include:

Public use
Sales
Publications
Patents
Abandoned applications
Statutory invention registrations (SIRs)

The MPEP states: 'The rejection may be based on activities by the inventor(s) or a different inventive entity.' This means that both the applicant's own activities and those of others can potentially be used as prior art against the claims.

To learn more:

Question 15

What types of activities can be used against claims in a patent application?

Accepted Answer

According to MPEP 715.01(d), various activities can be used against claims in a patent application. These include:

Public use
Sales
Publications
Patents
Abandonment

The MPEP states: 'The 1-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from the filing date to which the application is entitled (United States filing date or foreign priority date) with respect to the prior art activity.' This means that any of these activities occurring more than one year before the effective filing date can be used as prior art against the claims.

To learn more:

Question 16

What time period is covered by 37 CFR 1.130(a) declarations?

Accepted Answer

Declarations or affidavits under 37 CFR 1.130(a) cover disclosures made within one year or less before the effective filing date of the claimed invention. This is known as the grace period.

The MPEP states: 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

It's important to note that this provision is not available for disclosures made more than one year before the effective filing date of the claimed invention.

To learn more:

37 CFR 1.130(a)

Question 17

What steps are involved in the patent examination process after the search is completed?

Accepted Answer

The patent examination process after the search involves several key steps, as outlined in MPEP 707.01:

The assistant examiner explains the invention to the primary examiner.
They discuss the most pertinent references found during the search.
The primary examiner indicates the action to be taken, which may include:
- Requiring restriction or election of species
- Considering claims on their merits
- Rejecting claims based on prior art or non-prior art grounds
- Authorizing allowance if all requirements are met

As stated in the MPEP, "The primary examiner may indicate the action to be taken, whether restriction or election of species is to be required, or whether the claims are to be considered on their merits." This process ensures a thorough and systematic examination of each patent application.

To learn more:

Question 18

What should be included in the Background of the Invention section of a patent application?

Accepted Answer

The Background of the Invention section in a patent application may include two main parts:

Field of the Invention: A statement describing the field of art to which the invention pertains. This may include a paraphrasing of applicable Cooperative Patent Classification (CPC) definitions.
Description of the related art: Information about the state of the prior art, including references to specific prior art where appropriate. This section should also describe any problems in the prior art that the invention solves.

It's important to note that while these components are typical, they are not strictly required. As stated in MPEP 608.01(c), "The Background of the Invention may (but is not required to) include the following parts..."

To learn more:

Question 19

What should be discussed in an interview prior to first official action in patent examination?

Accepted Answer

An interview prior to first official action in patent examination can cover several important topics. According to MPEP 713.02, the following subjects may be discussed:

The invention and its relation to the prior art
Potential rejections or objections that may arise
Possible amendments to define the invention over the prior art
Any other matters that could expedite prosecution

The MPEP emphasizes: 'The examiner's suggestions should be considered carefully by the applicant or attorney/agent before deciding the question of agreement or disagreement.' This highlights the importance of thoughtful consideration of any suggestions made during the interview.

It's also worth noting that the interview provides an opportunity for the applicant to clarify any aspects of the invention that may not be clear from the written application, potentially preventing misunderstandings that could lead to unnecessary rejections.

To learn more:

Question 20

What must be shown in a 37 CFR 1.131(a) affidavit or declaration?

Accepted Answer

A 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim. According to MPEP 715.02:

The 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it.

This means that the affidavit or declaration should demonstrate that the inventor had completed the invention or a significant part of it before the effective date of the reference being antedated.

To learn more:

37 CFR 1.131(a)

Question 21

What MPEP sections cover rejections under AIA 35 U.S.C. 102?

Accepted Answer

For patent applications subject to the America Invents Act (AIA), information on rejections under AIA 35 U.S.C. 102 can be found in MPEP §§ 2151 - 2156. These sections provide detailed guidance on how to apply the AIA version of 35 U.S.C. 102 in patent examination.

The AIA version of 35 U.S.C. 102 applies to patent applications with an effective filing date on or after March 16, 2013. It introduced significant changes to the definition of prior art and the novelty requirements for patentability.

To learn more:

35 U.S.C. 102

Question 22

What is the significance of the phrase 'applied against the claims' in MPEP 715.01(d)?

Accepted Answer

The phrase 'applied against the claims' in MPEP 715.01(d) is significant because it indicates that the activities or prior art being discussed are those that are actually being used to reject or challenge the patent claims. This section specifically states:

The activities applied against the claims are those relied on in the rejection.

This means that not all potential prior art or activities are relevant under this section, but only those that the examiner has specifically cited or relied upon in rejecting the claims. Understanding this distinction is crucial for applicants when preparing affidavits or declarations to overcome rejections.

To learn more:

MPEP 715.01(d)

Question 23

What is the significance of the invention date in MPEP 715.01(d)?

Accepted Answer

The invention date plays a crucial role in overcoming certain rejections under MPEP 715.01(d). According to the section:

"a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing date of the application may be overcome by an affidavit or declaration under 37 CFR 1.131(a) establishing a date of invention prior to the date of the activity."

This means that if an applicant can prove they invented the claimed invention before the date of the prior art or activity cited against them, they may be able to overcome the rejection. The invention date becomes the critical date for comparison, rather than the filing date of the application.

To establish the invention date, applicants must provide evidence through an affidavit or declaration under 37 CFR 1.131(a). This evidence typically includes documentation of conception of the invention and diligence in reducing it to practice or actual reduction to practice.

It's important to note that this approach is mainly applicable to pre-AIA (first-to-invent) applications. For AIA (first-inventor-to-file) applications, different rules apply, as outlined in MPEP § 717.

To learn more:

Question 24

What is the significance of the filing date in a divisional application?

Accepted Answer

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): 'A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.'
Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
Patent term calculations: The filing date may affect the calculation of the patent term.
Priority claims: It establishes the basis for any priority claims to foreign applications.

It's important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

For more information on Divisional application, visit: Divisional application.

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

For more information on prior art, visit: prior art.

Question 25

What is the significance of the filing date in a continuation-in-part application?

Accepted Answer

What is the significance of the filing date in a continuation-in-part application?

The filing date of a continuation-in-part (CIP) application is crucial for determining the effective date of certain disclosures. According to MPEP 201.08:

"The effective filing date of a claimed invention in a CIP application is determined on a claim-by-claim basis and not an application-by-application basis."

This means:

Subject matter carried over from the parent application retains the parent's filing date.
New matter introduced in the CIP receives the filing date of the CIP application.
Claims in the CIP are evaluated individually to determine which filing date applies based on their content.

Understanding this distinction is crucial for patent practitioners when assessing prior art and determining the scope of protection for inventions disclosed in CIP applications.

To learn more:

Question 26

What is the significance of the effective filing date in patent examination?

Accepted Answer

The effective filing date is crucial in patent examination as it determines which prior art can be used against the claims. MPEP 715.01(d) states:

'The 1-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from the filing date to which the application is entitled (United States filing date or foreign priority date) with respect to the prior art activity.'

This means that the effective filing date serves as the reference point for determining:

Whether a disclosure falls within the grace period
Which version of 35 U.S.C. 102 applies (pre-AIA or AIA)
What qualifies as prior art against the application

Understanding the effective filing date is essential for both applicants and examiners in assessing the patentability of claims.

To learn more:

Question 27

What is the significance of the effective filing date in patent applications?

Accepted Answer

What is the significance of the effective filing date in patent applications?

The effective filing date is a crucial concept in patent law that determines which prior art can be used against a patent application. According to MPEP 2152:

The effective filing date of a claimed invention is used to determine what qualifies as prior art that may be used to reject the claims of the application.

Key points about the effective filing date:

It can be the actual filing date of the application or an earlier date if the application claims priority to a prior-filed application.
For AIA applications, it determines which version of 35 U.S.C. 102 applies (pre-AIA or AIA).
It affects the scope of prior art that can be cited against the application.
Different claims within the same application may have different effective filing dates.

Understanding the effective filing date is essential for both patent applicants and examiners in assessing patentability and managing priority claims.

For more information on effective filing date, visit: effective filing date.

For more information on prior art, visit: prior art.

Question 28

What is the significance of the AIA grace period in 37 CFR 1.130(a) declarations?

Accepted Answer

What is the significance of the AIA grace period in 37 CFR 1.130(a) declarations?

The AIA grace period is crucial for 37 CFR 1.130(a) declarations because it determines the eligibility of a disclosure to be disqualified as prior art. According to MPEP 717.01(a):

"The provision of 37 CFR 1.130(a) is not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention."

This means that for a 1.130(a) declaration to be effective, the disclosure in question must have occurred within the one-year grace period before the effective filing date of the claimed invention. Disclosures made outside this period cannot be disqualified using a 1.130(a) declaration, even if they originated from the inventor or a joint inventor.

The AIA grace period provision allows inventors to publicly disclose their invention up to one year before filing a patent application without that disclosure being considered prior art against their own application. This is particularly important for academic researchers and companies that may need to present or publish their work before filing a patent application.

To learn more:

AIA grace period
37 CFR 1.130(a)
declaration
prior art
effective filing date

To learn more:

37 CFR 1.130(a)

Question 29

What is the significance of enablement in prior art references?

Accepted Answer

What is the significance of enablement in prior art references?

Enablement is a crucial concept in evaluating prior art references during patent examination. The MPEP 716.07 provides important guidance on this matter:

"The operability and utility of the prior art is presumed. However, once substantial evidence is presented rebutting this presumption, the examiner should reconsider whether there is an enabling disclosure commensurate with the scope of the claims."

The significance of enablement in prior art references includes:

Presumption of operability: Prior art is initially presumed to be operable and enabled.
Burden of proof: The applicant must provide substantial evidence to rebut this presumption.
Scope of enablement: If the presumption is rebutted, the examiner must reevaluate whether the reference enables the full scope of the claims.
Impact on rejection: Lack of enablement can affect the validity of a prior art reference for rejecting claims.

Understanding enablement is essential for both patent examiners and applicants, as it directly affects the strength and applicability of prior art references in the examination process.

To learn more:

Question 30

What is the significance of adding new disclosure in a continuation-in-part application?

Accepted Answer

Adding new disclosure in a continuation-in-part (CIP) application is a key characteristic that distinguishes it from other types of continuing applications. The MPEP ¶ 2.06 describes a CIP as an application that:

repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.

The significance of adding new disclosure includes:

Allowing applicants to expand on their original invention with new developments or improvements
Potentially broadening the scope of patent protection
Creating a new filing date for the added material, which can be crucial for overcoming prior art
Possibly extending the patent term for the new material

However, it's important to note that the new disclosure will not benefit from the earlier filing date of the prior application. This can affect patentability if relevant prior art emerges between the filing dates of the original application and the CIP.

For more information on prior art, visit: prior art.

Question 31

What is the significance of abandoned applications in patent examination?

Accepted Answer

Abandoned applications can play a significant role in patent examination. According to MPEP 715.01(d), abandoned applications are included in the list of activities that can be used against claims in a patent application. Specifically:

An abandoned application may serve as prior art under 35 U.S.C. 102(a)(2) if it was published or deemed published.
The content of abandoned applications can be cited as prior art to reject claims in pending applications.
Abandoned applications may contain disclosures that anticipate or render obvious the claims in a later-filed application.

It's important for applicants and examiners to be aware of relevant abandoned applications that could affect the patentability of pending claims.

To learn more:

abandoned applications
prior art
patent examination
35 U.S.C. 102(a)(2)

To learn more:

35 U.S.C. 102(a)(2)

Question 32

What is the significance of 'same invention' in MPEP 715.01(a)?

Accepted Answer

The concept of 'same invention' in MPEP 715.01(a) is crucial for understanding when a prior art reference can be disqualified. The MPEP states:

'If the rejection is based on a U.S. patent or U.S. patent application publication of a different inventive entity which claims the same invention or an obvious variant, and there is at least one common inventor, the U.S. patent or U.S. patent application publication may be removed as prior art under pre-AIA 35 U.S.C. 102(e)...'

This means that for an affidavit or declaration to be effective in removing a reference as prior art, the reference must claim either the exact same invention or an obvious variant of it. The 'same invention' requirement ensures that the prior art being disqualified is directly relevant to the claimed invention in the application being examined. If the inventions are substantially different, the affidavit or declaration may not be sufficient to overcome the rejection.

To learn more:

MPEP 715.01(a)

Question 33

What is the significance of 'different inventive entity' in MPEP 715.01(a)?

Accepted Answer

The concept of 'different inventive entity' is crucial in MPEP 715.01(a). It refers to situations where a reference (such as a patent or published application) names inventors that are not identical to those in the application being examined. The MPEP states:

'Where the reference is a U.S. patent or application publication of a pending or patented application naming at least one inventor in common with the instant application, claim the benefit of a provisional application, non-provisional application or international application...'

This means that even if there's a common inventor, the inventive entities are considered different if they're not identical. This distinction is important because it affects how the USPTO treats the reference in relation to the current application, particularly regarding prior art considerations and potential rejections.

To learn more:

Question 34

What is the role of affidavits in challenging the operability of a prior art reference?

Accepted Answer

What is the role of affidavits in challenging the operability of a prior art reference?

Affidavits can play a crucial role in challenging the operability of a prior art reference. According to MPEP 716.07, "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:

Affidavits can be used to assert that certain aspects of a prior art reference are inoperable.
However, the reference may still be valid for other features that are not challenged or remain operative.
The effectiveness of the affidavit depends on which specific features of the reference are being relied upon in the rejection.

It's important to note that the mere presence of an affidavit does not automatically invalidate a reference. The examiner will evaluate the affidavit in the context of the entire prior art disclosure and the claims being examined.

To learn more:

Question 35

What is the relationship between conception and diligence in patent law?

Accepted Answer

In patent law, there is a crucial relationship between conception and diligence. According to the MPEP, Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that the inventor or inventors had been diligent. Rather, applicant must show evidence of facts establishing diligence.

This means that when an inventor claims to have conceived an invention before a prior art reference but reduced it to practice after, they must provide evidence of diligence in the interim period. The MPEP further clarifies, In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established.

Therefore, the process typically follows this order:

Establish conception prior to the effective date of the reference
If conception is established, then demonstrate diligence from just before the reference date until reduction to practice

This relationship ensures that inventors who conceive an idea early but take time to reduce it to practice can still establish priority, provided they were diligent in their efforts.

To learn more:

conception
diligence
patent law
reduction to practice
prior art

Question 36

What is the purpose of MPEP 715.01(c)?

Accepted Answer

MPEP 715.01(c) provides guidance on how to overcome a rejection under pre-AIA 35 U.S.C. 102 when the reference cited is a publication of the inventor's own invention. The section explains:

Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by the inventor, at least one joint inventor, or on behalf of the inventor or at least one joint inventor.

This section is particularly relevant for patent attorneys and examiners dealing with pre-AIA applications.

To learn more:

35 U.S.C. 102

Question 37

What is the purpose of MPEP 715.01(a)?

Accepted Answer

MPEP 715.01(a) provides guidance on how to handle situations where a reference (patent or published application) names a different inventive entity with at least one common inventor compared to the application under examination. It specifically addresses how to overcome rejections based on such references using affidavits or declarations.

The section states: When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including inventor S and another joint inventor is claimed in a later application naming inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132.

To learn more:

Question 38

What is the purpose of declarations or affidavits under 37 CFR 1.130(a)?

Accepted Answer

Declarations or affidavits under 37 CFR 1.130(a) are used to disqualify a disclosure as prior art by establishing that:

The disclosure was made by the inventor or a joint inventor, or
The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

As stated in the MPEP, 37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

To learn more:

37 CFR 1.130(a)

Question 39

What is the purpose of an affidavit or declaration under 37 CFR 1.130?

Accepted Answer

An affidavit or declaration under 37 CFR 1.130 serves to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. As stated in MPEP 717.01:

An applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

This mechanism is crucial for inventors to protect their inventions from being invalidated by their own disclosures or those derived from their work.

To learn more:

37 CFR 1.130

Question 40

What is the purpose of an affidavit or declaration under 37 CFR 1.130?

Accepted Answer

An affidavit or declaration under 37 CFR 1.130 serves to disqualify a disclosure as prior art by either:

Establishing that the disclosure was made by the inventor or joint inventor, or the subject matter was obtained from the inventor or joint inventor (37 CFR 1.130(a))
Establishing that the subject matter disclosed had been publicly disclosed by the inventor or joint inventor before the disclosure or effective filing date of the prior art (37 CFR 1.130(b))

As stated in the MPEP: 37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b).

To learn more:

Question 41

What is the purpose of an affidavit or declaration under 37 CFR 1.130?

Accepted Answer

An affidavit or declaration under 37 CFR 1.130 serves to disqualify a disclosure as prior art or provide evidence of prior public disclosure or use. As stated in MPEP 717.01:

'37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b).'

This mechanism is crucial for inventors to overcome certain prior art rejections and establish their right to a patent.

To learn more:

37 CFR 1.130

Question 42

What is the purpose of a declaration under 37 CFR 1.130(b)?

Accepted Answer

A declaration under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the date of the disclosure being used as prior art. As stated in MPEP 717.01(b):

"Where the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the date of the intervening disclosure, the applicant may establish by way of an affidavit or declaration that the subject matter disclosed, which was also publicly disclosed by the intervening disclosure, had been publicly disclosed by the inventor or a joint inventor before the date of the intervening disclosure."

This declaration helps inventors protect their inventions from being considered prior art due to disclosures made after their own public disclosure but before the effective filing date of their application.

To learn more:

37 CFR 1.130(b)

Question 43

What is the purpose of a declaration under 37 CFR 1.130(a)?

Accepted Answer

A declaration under 37 CFR 1.130(a) serves the purpose of attributing a disclosure to an inventor or joint inventor to overcome a rejection or objection based on prior art. According to MPEP 717.01(a):

When a disclosure upon which a rejection is based is attributed to the inventor or a joint inventor, the rejection may be overcome by filing a declaration under 37 CFR 1.130(a).

This declaration helps establish that the disclosure should not be treated as prior art, as it originated from the inventor or joint inventor themselves.

To learn more:

37 CFR 1.130(a)

Question 44

What is the purpose of a declaration under 37 CFR 1.130(a) in patent examination?

Accepted Answer

A declaration under 37 CFR 1.130(a) serves a specific purpose in patent examination:

It is used to attribute a disclosure to an inventor or joint inventor to disqualify it as prior art.
The declaration aims to establish that the disclosure was made by the inventor or a joint inventor, or obtained directly or indirectly from them.

As stated in MPEP 717.01(a):

'When a rejection is based on a disclosure made one year or less before the effective filing date of the claimed invention, the rejection can be overcome under AIA 35 U.S.C. 102(b)(1)(A) by showing that the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.'

This declaration is crucial for inventors to overcome certain prior art rejections and protect their inventions.

To learn more:

37 CFR 1.130(a)

Question 45

What is the purpose of a declaration under 37 CFR 1.130(a) in patent applications?

Accepted Answer

What is the purpose of a declaration under 37 CFR 1.130(a) in patent applications?

A declaration under 37 CFR 1.130(a) serves to attribute a disclosure to the inventor or a joint inventor, or to establish that a disclosure was obtained from the inventor or a joint inventor. This is particularly useful when dealing with prior art that falls within the grace period exceptions under AIA 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).

The MPEP states: 'The provision of 37 CFR 1.130(a) is not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.' This highlights the importance of timing in using such declarations.

To learn more:

37 CFR 1.130(a)

Question 46

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor, before the date of the disclosure being relied upon as prior art.

According to MPEP 717.01(b)(1):

"The purpose of a declaration or affidavit submitted under 37 CFR 1.130(b) is to establish that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor."

To learn more:

37 CFR 1.130(b)

Question 47

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) is used to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

As stated in the MPEP: In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

To learn more:

37 CFR 1.130(b)

Question 48

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to disqualify a disclosure as prior art by establishing that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor, before the date of the reference or intervening disclosure.

According to MPEP 717.01(b): "The provision of 37 CFR 1.130(b) is not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention." This means that the declaration or affidavit is used to establish a grace period disclosure, effectively removing certain disclosures from being considered as prior art against the claimed invention.

To learn more:

Question 49

What is the purpose of a declaration or affidavit under 37 CFR 1.130(b)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(b) serves to attribute the subject matter disclosed in a grace period inventor disclosure to the inventor or a joint inventor. Its purpose is to establish that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

According to MPEP 717.01(b)(1):

"The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor requires an affidavit or declaration under 37 CFR 1.130(b)."

This declaration helps overcome certain prior art rejections by showing that the disclosed subject matter originated from the inventor(s) themselves.

To learn more:

Question 50

What is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(a) serves to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. As stated in MPEP 717.01(a)(1):

"The provision of 37 CFR 1.130(a) is not available if the disclosure was made more than one year before the effective filing date of the claimed invention. This is statutory as the provisions of 35 U.S.C. 102(b)(1)(A) are not available in such a situation."

This means that the declaration or affidavit is a critical tool for inventors to overcome certain types of prior art rejections, but it has specific limitations on when it can be used.

To learn more:

37 CFR 1.130(a)

Question 51

What is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(a) serves to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. According to MPEP 717.01(a)(1):

The purpose of a declaration or affidavit submitted under 37 CFR 1.130(a) is to establish that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

This helps inventors protect their inventions by preventing their own disclosures or those derived from their work from being used against them as prior art during the patent examination process.

To learn more:

37 CFR 1.130(a)

Question 52

What is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(a) serves to attribute a disclosure that might otherwise qualify as prior art to the inventor or joint inventor. Its purpose is to establish that the disclosure was made by the inventor or joint inventor, or obtained directly or indirectly from them.

As stated in MPEP 717.01(a)(1):

The purpose of a declaration or affidavit submitted under 37 CFR 1.130(a) is to establish that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

This helps to remove potential prior art that could otherwise be used against the patent application.

To learn more:

Question 53

What is the purpose of a declaration or affidavit under 37 CFR 1.130(a)?

Accepted Answer

A declaration or affidavit under 37 CFR 1.130(a) is used to show that:

The disclosure was made by the inventor or a joint inventor, or
The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

As stated in the MPEP, In other words, the affidavits or declarations are seeking to attribute an activity, a reference, or part of a reference to the inventor(s) to show that the disclosure is not available as prior art under 35 U.S.C. 102(a).

To learn more:

37 CFR 1.130(a)
declaration
affidavit
prior art
inventor disclosure

To learn more:

Question 54

What is the purpose of 37 CFR 1.131(c)?

Accepted Answer

37 CFR 1.131(c) provides a mechanism to disqualify certain prior art in patent applications or patents under reexamination. Specifically, it addresses situations where:

A claim is rejected under 35 U.S.C. 103 (as in effect on March 15, 2013)
The rejection is based on a U.S. patent or U.S. patent application publication that is not prior art under 35 U.S.C. 102(b) (as in effect on March 15, 2013)
The inventions are not identical but are not patentably distinct
The inventions are owned by the same party

In such cases, the applicant or patent owner can disqualify the cited patent or publication as prior art by submitting:

As stated in the MPEP: 37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 (based on prior art under pre-AIA 35 U.S.C. 102) in view of a U.S. patent or U.S. patent application publication which is not prior art under pre-AIA 35 U.S.C. 102(b).

To learn more:

37 CFR 1.131(c)

Question 55

What is the purpose of 37 CFR 1.130(b)?

Accepted Answer

37 CFR 1.130(b) provides a mechanism for applicants or patent owners to disqualify certain disclosures as prior art. Specifically, it allows them to establish that the subject matter disclosed had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor before the disclosure was made or effectively filed.

As stated in the MPEP: 37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

To learn more:

37 CFR 1.130(b)

Question 56

What is the primary goal of patent examination?

Accepted Answer

The primary goal of patent examination is to thoroughly review and analyze the patent application in light of prior art and clearly articulate any rejections early in the prosecution process. As stated in the MPEP:

"The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity."

This approach allows applicants to address issues promptly and effectively during the examination process.

To learn more:

Question 57

What is the practice for genus-species cases where predictability is in question?

Accepted Answer

In cases where predictability is in question, the practice for genus-species cases is more stringent. As stated in MPEP 715.03: "In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or activity." This means that inventors may need to provide more comprehensive evidence to establish possession of the generic invention.

To learn more:

Question 58

What is the Notice of References Cited (PTO-892) form?

Accepted Answer

The Notice of References Cited (PTO-892) is a separate form attached to the applicant's copy of the Office action. It lists the references cited by the examiner during the examination of the patent application.

According to MPEP 707: The list of references cited appears on a separate form, Notice of References Cited, PTO-892 (copy in MPEP § 707.05) attached to applicant's copy of the Office action.

This form is crucial for applicants to understand the prior art considered by the examiner and to address these references in their response or subsequent amendments to the application.

To learn more:

Question 59

What is the impact of a defective priority or benefit claim?

Accepted Answer

What is the impact of a defective priority or benefit claim?

A defective priority or benefit claim can have significant consequences for a patent application. According to MPEP 211.01, if the claim for priority or benefit is not properly made:

'If the claim for priority or benefit is not included in an ADS, the claim for priority or benefit must be included in the first sentence(s) of the specification following the title or in an application data sheet. The specific reference to the prior application must be in the first sentence(s) of the specification following the title or in an application data sheet unless the reference appeared in a preliminary amendment filed on filing.'

The impacts of a defective claim can include:

Loss of priority date: This can affect the assessment of prior art against the application.
Potential rejection: Claims may be rejected if intervening prior art exists between the filing dates of the prior and current applications.
Inability to overcome certain rejections: Without the earlier priority date, it may be harder to overcome rejections based on intervening art.
Possible patent term reduction: If the defect is not corrected promptly, it could affect the patent term adjustment.

To avoid these issues, applicants should ensure that priority or benefit claims are properly made in accordance with 37 CFR 1.78 and correct any defects promptly using the procedures outlined in the MPEP.

To learn more:

Question 60

What is the effect of a proper foreign priority claim on the effective filing date?

Accepted Answer

A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.

35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority "shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country."

This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it's important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.

Question 61

What is the effect of a Joint Research Agreement on patent rejections?

Accepted Answer

A Joint Research Agreement (JRA) can affect patent rejections in the following ways:

It can except certain subject matter as prior art under 35 U.S.C. 102(b)(2)(C) and 102(c) for applications subject to AIA.
It can disqualify certain references as prior art under pre-AIA 35 U.S.C. 103(c).
When a rejection is overcome due to a JRA, the examiner may need to make a new double patenting rejection in the next Office action.

As stated in MPEP 706.07(a): "When a reference's subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action."

To learn more:

Question 62

What is the effect of a benefit claim on the effective filing date of a continuing application?

Accepted Answer

What is the effect of a benefit claim on the effective filing date of a continuing application?

A benefit claim to a prior-filed application can significantly impact the effective filing date of a continuing application. The MPEP 211.01(b) explains:

'The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. It is possible for different claims in a later-filed application to receive different effective filing dates.'

This means that:

Each claim in a continuing application may have a different effective filing date
The effective date depends on when the claimed subject matter was first disclosed in a parent application
Claims fully supported by the parent application get the parent's filing date as their effective date
New matter introduced in the continuing application gets the actual filing date of that application

It's crucial for applicants to carefully consider the content of prior applications when making benefit claims, as this can affect patentability determinations and the scope of prior art that can be cited against the claims.

To learn more:

Question 63

What is the difference between prior art under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2)?

Accepted Answer

The distinction between prior art under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) is crucial for understanding the application of the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c):

Prior art under 35 U.S.C. 102(a)(1) includes disclosures available to the public before the effective filing date of the claimed invention.
Prior art under 35 U.S.C. 102(a)(2) includes U.S. patents, U.S. patent application publications, or WIPO publications of international applications that designate the United States, which have an effective filing date before the effective filing date of the claimed invention.

The MPEP explicitly states: Examiners are reminded that a disclosure that is prior art under 35 U.S.C. 102(a)(1) is not excepted as prior art even if the reference is excepted under 35 U.S.C. 102(b)(2)(C).

This means that the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) only applies to prior art under 35 U.S.C. 102(a)(2) and not to prior art under 35 U.S.C. 102(a)(1).

To learn more:

Question 64

What is the difference between anticipation and obviousness in patent rejections?

Accepted Answer

What is the difference between anticipation and obviousness in patent rejections?

Anticipation and obviousness are two distinct grounds for rejecting a patent application based on prior art:

Anticipation (35 U.S.C. 102): This occurs when a single prior art reference discloses all elements of the claimed invention. As stated in MPEP 2131, "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."
Obviousness (35 U.S.C. 103): This rejection is made when the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art. Multiple references may be combined to render the invention obvious. As per MPEP 2141, "The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art."
Understanding these differences is crucial for both patent examiners and applicants in the patent prosecution process.
To learn more:
To learn more:
- 35 U.S.C. 102
- 35 U.S.C. 103

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (15)

What is the significance of the filing date in a divisional application?

What is the significance of the filing date in a divisional application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the effective filing date in patent applications?

What is the significance of the effective filing date in patent applications?

What is the significance of adding new disclosure in a continuation-in-part application?

What is the impact of a defective priority or benefit claim?

What is the impact of a defective priority or benefit claim?

What is the effect of a benefit claim on the effective filing date of a continuing application?

What is the effect of a benefit claim on the effective filing date of a continuing application?

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

What are the implications of not properly claiming benefit in a potential CIP application?

What are the implications of deleting a benefit claim from my patent application?

What are the consequences of failing to meet the disclosure requirements when claiming benefit of an earlier application?

How does the filing date of new matter in a CIP application affect patent rights?

How does the filing date of new matter in a CIP application affect patent rights?

How does new matter in a continuation-in-part affect prior art considerations?

How does new matter in a continuation-in-part affect prior art considerations?

How does claiming the benefit of an international design application affect the effective filing date?

How does a CPA affect patent term and prior art dates?

Can I delete a benefit claim, and what are the implications?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)

What is the effect of a proper foreign priority claim on the effective filing date?

MPEP 201 - Types of Applications (6)

What is the significance of the filing date in a divisional application?

What is the significance of the filing date in a divisional application?

What is the significance of adding new disclosure in a continuation-in-part application?

What are the implications of not properly claiming benefit in a potential CIP application?

How does the filing date of new matter in a CIP application affect patent rights?

How does the filing date of new matter in a CIP application affect patent rights?

How does new matter in a continuation-in-part affect prior art considerations?

How does new matter in a continuation-in-part affect prior art considerations?

How does a CPA affect patent term and prior art dates?

MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (2)

How does claiming the benefit of an international design application affect the effective filing date?

Can I delete a benefit claim, and what are the implications?

MPEP 213-Right of Priority of Foreign Application (1)

What is the effect of a proper foreign priority claim on the effective filing date?

MPEP 400 - Representative of Applicant or Owner (1)

How does the USPTO define ‘material information’ in patent applications?

How does the USPTO define ‘material information’ in patent applications?

MPEP 410 - Representations to the U.S. Patent and Trademark Office (1)

How does the USPTO define ‘material information’ in patent applications?

How does the USPTO define ‘material information’ in patent applications?

Patent Law (32)

When should prior art figures be included in a patent application?

What should be included in the Background of the Invention section of a patent application?

What is the significance of the filing date in a divisional application?

What is the significance of the filing date in a divisional application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the filing date in a continuation-in-part application?

What is the significance of the effective filing date in patent applications?

What is the significance of the effective filing date in patent applications?

What is the significance of adding new disclosure in a continuation-in-part application?

What is the impact of a defective priority or benefit claim?

What is the impact of a defective priority or benefit claim?

What is the effect of a proper foreign priority claim on the effective filing date?

What is the effect of a benefit claim on the effective filing date of a continuing application?

What is the effect of a benefit claim on the effective filing date of a continuing application?

What is the correct procedure for submitting corrected drawings in response to a prior art figure objection?

What is an Information Disclosure Statement (IDS) in patent applications?

What information should be included in the Description of the Related Art section?

What happens if prior art figures are not properly labeled in a patent application?

What happens if a continuation-in-part application includes new matter not disclosed in the parent application?

What are the implications of not properly claiming benefit in a potential CIP application?

What are the implications of deleting a benefit claim from my patent application?

What are the consequences of failing to meet the disclosure requirements when claiming benefit of an earlier application?

What are considered derogatory remarks in a patent specification?

How should prior art figures be labeled in a patent application?

How does the USPTO define ‘material information’ in patent applications?

How does the USPTO define ‘material information’ in patent applications?

How does the patent title affect search and classification?

How does the patent title affect search and classification?

How does the filing date of new matter in a CIP application affect patent rights?

How does the filing date of new matter in a CIP application affect patent rights?

How does new matter in a continuation-in-part affect prior art considerations?

How does new matter in a continuation-in-part affect prior art considerations?