How can an applicant show that a disclosure was made by the inventor or a joint inventor?
An applicant can show that a disclosure was made by the inventor or a joint inventor by submitting an affidavit or declaration under 37 CFR 1.130(a), also known as an affidavit or declaration of attribution. The MPEP states: “An applicant may show that a disclosure was made by the inventor or a joint inventor by…
Read MoreWhat is the difference between sexual and asexual reproduction in plant patents?
In the context of plant patents, the distinction between sexual and asexual reproduction is crucial. The MPEP 2121.03 highlights this difference in discussing the In re LeGrice case: “There was no evidence of commercial availability in enabling form since the asexually reproduced rose could not be reproduced from seed. Therefore, the public would not have…
Read MoreWhen is a claim’s eligibility considered self-evident?
A claim’s eligibility is considered self-evident when it clearly does not attempt to monopolize a judicial exception. The MPEP 2106.06(a) states: “Such claims do not need to proceed through the full analysis herein as their eligibility will be self-evident.” Examples of self-evident eligibility include: Complex manufactured industrial products or processes with meaningful limitations Claims that…
Read MoreWhat are examples of claims with self-evident eligibility?
The MPEP 2106.06(a) provides several examples of claims with self-evident eligibility: Robotic arm assembly: “A robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility.” Artificial hip prosthesis: “A…
Read MoreHow do you select the appropriate counterpart for the markedly different characteristics analysis?
Selecting the appropriate counterpart is a crucial step in the markedly different characteristics analysis. The MPEP provides guidance on this process: “Because the markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state, the first step in the analysis is to select the appropriate counterpart(s) to the…
Read MoreHow does secret use affect public use determinations in patent law?
Secret use of an invention can still constitute public use under certain circumstances, potentially affecting patentability. The MPEP 2133.03(a) states: “Secret use of an invention by the inventor or his agents for his own profit or advantage prior to the critical date is a bar to a patent […] even though the use may not…
Read MoreWhat constitutes “secret use” in patent law?
What constitutes “secret use” in patent law? In patent law, “secret use” refers to the use of an invention that is kept confidential and not accessible to the public. The Manual of Patent Examining Procedure (MPEP) 2152.02(c) states: “An inventor’s private use or sale of the invention is not prior art under AIA 35 U.S.C.…
Read MoreHow does secret use of an invention affect its patentability?
Secret use of an invention can have significant implications for its patentability. While secret use does not typically constitute public use, it can still impact the ability to obtain a patent under certain circumstances. According to MPEP 2133.03(a): “Secret use is not public use under 35 U.S.C. 102(b). However, a non-secret use by someone other…
Read MoreCan a secret use of an invention constitute public use?
Yes, in some circumstances, a secret or confidential use of an invention can constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP explains: “[S]ecrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use; commercial exploitation is also forbidden.” (MPEP 2133.03(a)) This means that even if…
Read MoreCan secret sales or offers trigger the on-sale bar in patent law?
Yes, secret sales or offers can trigger the on-sale bar in patent law. The MPEP 2152.02(d) states: “The courts have consistently held that an invention may be “on sale” even if the sale or offer is secret.” This means that even if a sale or offer is not publicly known, it can still affect the…
Read More