How is “substantially the same subject matter” determined for pre-AIA 35 U.S.C. 135(b)?
Determining “substantially the same subject matter” for pre-AIA 35 U.S.C. 135(b) is crucial for interference proceedings. The MPEP provides guidance on this determination: “The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different…
Read MoreWhat is the one-year rule in pre-AIA 35 U.S.C. 135(b)?
The one-year rule in pre-AIA 35 U.S.C. 135(b) sets time limits for making claims that are the same as, or for substantially the same subject matter as, claims in an issued patent or published application. Specifically: For issued patents: A claim cannot be made in any application unless it’s made prior to one year from…
Read MoreHow does the MPEP define “benefit” in the context of priority claims?
According to MPEP 2304.02(c), “benefit” in the context of priority claims refers to the benefit of an earlier filing date. The MPEP states: “The party seeking benefit may be required to provide a chart showing the written description for each claim in dispute, and/or an explanation of additional evidence showing possession of the claimed invention.”…
Read MoreHow does an applicant explain priority in an interference suggestion?
When suggesting an interference, an applicant must explain their priority position in detail. According to 37 CFR 41.202(a)(4), the suggestion must “Explain in detail why the applicant will prevail on priority.” This explanation can take different forms depending on the applicant’s priority position: If the applicant has an earlier constructive reduction-to-practice than the apparent earliest…
Read MoreWhat is the role of an examiner in reviewing a suggestion of interference?
An examiner’s role in reviewing a suggestion of interference is primarily focused on specific circumstances, particularly when dealing with rejections under pre-AIA 35 U.S.C. 102(a) or 102(e). The MPEP states: “If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR…
Read MoreWhat evidence can be used to show possession of a claimed invention for priority purposes?
The MPEP 2304.02(c) provides guidance on the types of evidence that can be used to show possession of a claimed invention for priority purposes: Written description: A detailed explanation of how the earlier application supports each claim element. Charts: Visual representations showing the correlation between claim elements and the earlier application’s disclosure. Additional evidence: This…
Read MoreWhat is a constructive reduction-to-practice in patent law?
A constructive reduction-to-practice in patent law refers to a description in a patent application that would have anticipated the subject matter of a count in an interference proceeding. According to MPEP 2304.02(c), “A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count.…
Read MoreHow does the MPEP address the burden of proof in priority disputes?
The MPEP 2304.02(c) addresses the burden of proof in priority disputes by stating: “The burden of proof is on a party seeking the benefit of the filing date of an earlier application.” This means that: The party claiming priority has the responsibility to demonstrate their entitlement to the earlier filing date. They must provide sufficient…
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