What 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…
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 a prima facie rejection based on lack of utility?
A prima facie rejection based on lack of utility is an initial determination by a patent examiner that an invention lacks specific and substantial credible utility as required by 35 U.S.C. 101 and 35 U.S.C. 112(a). The MPEP provides guidance on how this process works: “Once a prima facie showing of no specific and substantial…
Read MoreHow should patent examiners review responses to utility rejections?
When reviewing responses to utility rejections, patent examiners are instructed to conduct a comprehensive evaluation. The MPEP provides specific guidance: “If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or…
Read MoreHow do patent examiners assess the credibility of utility statements?
Patent examiners are required to treat statements of utility made by applicants as true unless there is countervailing evidence. The MPEP states: “Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that…
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