How does one make a timely election to proceed under pre-AIA 35 U.S.C. 103(b)?
Making a timely election to proceed under pre-AIA 35 U.S.C. 103(b) is crucial for applicants seeking to benefit from this provision. The MPEP provides guidance on what is considered timely: An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or…
Read MoreWhat are the requirements for applying pre-AIA 35 U.S.C. 103(b)?
There are several key requirements for applying pre-AIA 35 U.S.C. 103(b): The biotechnological process and composition of matter must be in the same application or separate applications with the same effective filing date. Both must be owned or assigned to the same person when the process was invented. The patent issued on the process must…
Read MoreWhat is pre-AIA 35 U.S.C. 103(b) and when does it apply?
Pre-AIA 35 U.S.C. 103(b) is a provision applicable to biotechnological processes. It precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnological compositions of matter under pre-AIA 35 U.S.C. 103(a). This provision is only applicable to applications subject to pre-AIA 35 U.S.C. 102. As stated in the MPEP: Only…
Read MoreHow has the Federal Circuit’s decisions in Ochiai and Brouwer affected the need for pre-AIA 35 U.S.C. 103(b)?
The Federal Circuit’s decisions in In re Ochiai and In re Brouwer have significantly impacted the need for relying on pre-AIA 35 U.S.C. 103(b). The MPEP notes: In view of the Federal Circuit’s decisions in Ochiai and Brouwer, an applicant’s need to rely upon pre-AIA 35 U.S.C. 103(b) should be rare. These cases addressed whether…
Read MoreWhat happens if a patent is granted without an election under pre-AIA 35 U.S.C. 103(b)?
If a patent is granted on an application that was entitled to the benefit of pre-AIA 35 U.S.C. 103(b), but no election was made due to an error, there is still a remedy available. The MPEP states: However, if a patent is granted on an application entitled to the benefit of pre-AIA 35 U.S.C. 103(b)…
Read MoreWhat is considered a “biotechnological process” under pre-AIA 35 U.S.C. 103(b)?
Pre-AIA 35 U.S.C. 103(b) provides a specific definition for a “biotechnological process.” According to the statute, it includes: A process of genetically altering or inducing a single- or multi-celled organism to: Express an exogenous nucleotide sequence Inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence Express a specific physiological characteristic not naturally associated…
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