How does the “time of invention” differ for AIA and pre-AIA applications in equivalence determinations?
The “time of invention” consideration differs for AIA (America Invents Act) and pre-AIA applications in equivalence determinations: For AIA applications: The relevant time is “before the effective filing date of the claimed invention.” For pre-AIA applications: The relevant time is “at the time of the invention.” MPEP 2183 notes: “For applications subject to the first…
Read MoreHow do time and expense factor into the assessment of undue experimentation?
Time and expense are considerations in assessing undue experimentation, but they are not determinative factors on their own. The MPEP provides guidance on this in section 2164.06: “Time and expense are merely factors in this consideration and are not the controlling factors.” Key points to consider: Extensive time or high costs don’t automatically make experimentation…
Read MoreWhat are the threshold requirements for clarity and precision in patent claims?
The threshold requirements for clarity and precision in patent claims are set forth in 35 U.S.C. 112(b). The MPEP emphasizes: “The examiner’s focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity…
Read MoreWhat is the ‘three-prong test’ for functional claim language?
The ‘three-prong test’ for functional claim language is a method used by the USPTO to determine whether a claim limitation expressed in functional language is sufficiently definite under 35 U.S.C. 112(b). According to MPEP 2173.05(g), the test involves the following three prongs: Is there a clear cut indication of the scope of the subject matter…
Read MoreWhat is the three-prong test for identifying limitations under 35 U.S.C. 112(f)?
The three-prong test is used to determine whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. According to MPEP ยง 2181, the test consists of the following prongs: The claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a…
Read MoreCan a sale by a third party trigger the on-sale bar?
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states: A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may…
Read MoreHow does awaiting third-party approval affect the completeness of an invention?
Awaiting approval from a third-party organization, such as Underwriters’ Laboratories, typically does not extend the experimental use period if the inventor already considers the invention complete. The MPEP states: If the examiner concludes from the evidence of record that the inventor was satisfied that an invention was in fact “complete,” awaiting approval by the inventor…
Read MoreCan third-party activities qualify as experimental use in patent law?
Experimental use is personal to the inventor and generally does not extend to independent third-party activities. The MPEP states: “Where an inventor presents evidence of experimental activity by such other party, the evidence will not overcome the prima facie case of unpatentability based upon the activity of such party unless the activity was under the…
Read MoreHow does the USPTO handle therapeutic or pharmacological utility claims?
The USPTO applies the same legal requirements for utility to therapeutic or pharmacological inventions as it does to inventions in other fields. According to MPEP 2107.01: “Inventions asserted to have utility in the treatment of human or animal disorders are subject to the same legal requirements for utility as inventions in any other field of…
Read MoreWhat is the test of enablement in patent law?
The test of enablement in patent law determines whether the disclosure in a patent application contains sufficient information to enable a person skilled in the relevant art to make and use the claimed invention without undue experimentation. As stated in MPEP 2164.01: “The standard for determining whether the specification meets the enablement requirement was cast…
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