What is the time frame for adding a required claim for interference?
When an examiner requires an applicant to add a claim for interference, there is a specific time frame that must be followed. According to 37 CFR 41.202(c): “Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of…
Read MoreHow are requests for extensions of time after Action Closing Prosecution (ACP) handled?
Requests for extensions of time after Action Closing Prosecution (ACP) in inter partes reexamination are handled with caution, especially when related to submitting affidavits. Key points include: Granting an extension does not guarantee acceptance of the affidavit. Examiners may question why the affidavit was not presented earlier. Insufficient showings may result in denial of affidavit…
Read MoreCan the time limit for completing an incomplete ex parte reexamination request be extended?
The time limit for completing an incomplete ex parte reexamination request can be extended, but only under specific circumstances: Extensions may be granted for sufficient cause if requested in a timely manner. The request for extension must be filed within the original time period for completing the request. Extensions are granted at the discretion of…
Read MoreHow do time and expense factor into the assessment of undue experimentation?
Time and expense are considerations in assessing undue experimentation, but they are not determinative factors on their own. The MPEP provides guidance on this in section 2164.06: “Time and expense are merely factors in this consideration and are not the controlling factors.” Key points to consider: Extensive time or high costs don’t automatically make experimentation…
Read MoreWhat are the threshold requirements for clarity and precision in patent claims?
The threshold requirements for clarity and precision in patent claims are set forth in 35 U.S.C. 112(b). The MPEP emphasizes: “The examiner’s focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity…
Read MoreWhat is a threshold issue in a patent interference?
A threshold issue in a patent interference is a critical concept that can potentially end the proceeding early. The MPEP 2301.02 defines it as follows: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include: (1) No interference-in-fact, and…
Read MoreWhat is a “threshold issue” in patent interference proceedings?
A threshold issue in patent interference proceedings is a critical concept defined in 37 CFR 41.201. The MPEP states: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference.” One important threshold issue specifically mentioned is: “Unpatentability for lack of written description under…
Read MoreWhat is the “three-year pendency” rule for patent term adjustment?
The “three-year pendency” rule is a key provision in patent term adjustment, as outlined in 37 CFR 1.702(b). Under this rule: A patent is entitled to term adjustment if the USPTO fails to issue the patent within three years of the actual filing date Certain time periods are excluded from this three-year calculation, such as…
Read MoreWhat is the three-year pendency adjustment (B-delay) in patent term adjustment?
The three-year pendency adjustment, also known as B-delay, is a component of patent term adjustment that compensates applicants when patent issuance is delayed beyond three years from the actual filing date. According to MPEP 2731: “37 CFR 1.703(b) pertains to the provisions of 35 U.S.C. 154(b)(1)(B) and indicates that the period of adjustment under 37…
Read MoreWhat is the ‘three-prong test’ for functional claim language?
The ‘three-prong test’ for functional claim language is a method used by the USPTO to determine whether a claim limitation expressed in functional language is sufficiently definite under 35 U.S.C. 112(b). According to MPEP 2173.05(g), the test involves the following three prongs: Is there a clear cut indication of the scope of the subject matter…
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