What is the Wayback Machine® and how is it used in patent law?
The Wayback Machine® is a digital archive maintained by the Internet Archive, a non-profit organization. It’s used to view archived versions of websites as they existed at specific points in time. In patent law, the Wayback Machine® can be a valuable tool for establishing the public accessibility of online content on a specific date. According…
Read MoreHow does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?
The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect: “The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.” To satisfy the “way” prong, the examiner…
Read MoreHow does the “was-was” analysis apply to product-by-process claims?
The “was-was” analysis is a key concept in evaluating product-by-process claims. According to MPEP 2113: “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or…
Read MoreWhat are the Wands factors for determining undue experimentation?
The Wands factors, established in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), are a set of criteria used to determine whether a patent disclosure satisfies the enablement requirement. According to MPEP 2164.01(a), these factors include: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior…
Read MoreCan an applicant voluntarily identify grace period inventor-originated disclosures?
Yes, an applicant can voluntarily identify grace period inventor-originated disclosures. The MPEP encourages this practice: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to identify any prior inventor-originated disclosures or to use the format…
Read MoreHow does the Vanda case relate to the treatment or prophylaxis consideration in Step 2A Prong Two?
The Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Ltd. case is significant in the context of the treatment or prophylaxis consideration in Step 2A Prong Two. According to MPEP 2106.04(d)(2): “Vanda Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117, 126 USPQ2d 1266 (Fed. Cir. 2018). The claims in Vanda recited a method of…
Read MoreWhat constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)? A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02: “The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically…
Read MoreWhat is the standard for utility in research tools and intermediate products?
The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01: “Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.” The MPEP emphasizes that…
Read MoreWhat is the utility requirement for patents?
The utility requirement for patents stipulates that a claimed invention must be useful or have a utility that is specific, substantial, and credible. The MPEP states: “A claimed invention must be useful or have a utility that is specific, substantial and credible.“ This requirement ensures that patents are granted only for inventions that have a…
Read MoreWhat is the utility requirement in patent law?
The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with…
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