What constitutes sufficient evidence of reduction to practice in 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…
Read MoreWhat constitutes “sufficient accessibility” for a printed publication under MPEP 2152.02(b)?
According to MPEP 2152.02(b), “sufficient accessibility” for a printed publication is determined by whether the publication was made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. The MPEP states: “The level of public accessibility required to qualify as a printed publication…
Read MoreWhat happens if an applicant successfully rebuts a utility rejection?
When an applicant successfully rebuts a utility rejection, the patent examiner is required to withdraw both the utility rejection and any related rejections. The MPEP clearly states: “If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection…
Read MoreWhat is the requirement for substituting equivalents in patent obviousness?
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP: “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized…
Read MoreWhat is the “substantial utility” requirement in patent law?
The “substantial utility” requirement in patent law refers to the need for an invention to show a significant and presently available benefit to the public. According to MPEP 2107.01: “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some…
Read MoreWhat constitutes “substantial activity” in the U.S. for the on-sale bar under pre-AIA law?
The concept of “substantial activity” in the U.S. is crucial for determining if foreign sales can trigger the on-sale bar under pre-AIA law. While the MPEP doesn’t provide an exhaustive definition, it offers guidance: “‘On sale’ status can be found if substantial activity prefatory to a ‘sale’ occurs in the United States.” (MPEP 2133.03(d)) This…
Read MoreWhat is the process for submitting a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection?
To submit a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection, you must: File a corrected application data sheet (ADS) or amend the specification, depending on the application filing date: For applications filed on or after September 16, 2012: File a corrected ADS under 37 CFR 1.76 with a…
Read MoreHow does the MPEP address “subjective terms” in patent claims?
How does the MPEP address “subjective terms” in patent claims? The MPEP 2173.05(b) addresses the use of subjective terms in patent claims. Subjective terms are relative terms that depend on the subjective opinion of a person. The MPEP states: “When a subjective term is used in the claim, the examiner should determine whether the specification…
Read MoreWhat is the subjective nature of the best mode requirement in patent law?
What is the subjective nature of the best mode requirement in patent law? The best mode requirement in patent law has a subjective component that distinguishes it from other patentability requirements. This subjectivity is rooted in the inventor’s personal knowledge and preferences. According to MPEP 2165.01: “The best mode requirement is a safeguard against the…
Read MoreWhat is the subjective inquiry in best mode assessment?
The subjective inquiry is the first component of the best mode analysis, as described in MPEP 2165.03. It focuses on the inventor’s state of mind at the time of filing the patent application. Specifically, the examiner must: “Determine whether, at the time the application was filed, the inventor knew of a mode of practicing the…
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