How can an applicant demonstrate unexpected results in a 37 CFR 1.132 affidavit?
Demonstrating unexpected results in a 37 CFR 1.132 affidavit can be a powerful way to support patentability. MPEP 716.02 provides guidance on how to effectively present such evidence: ‘Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ…
Read MoreHow can the presumption of operability be challenged in a patent?
The presumption of operability in a patent can be challenged through affidavits or declarations that provide evidence of inoperability. However, MPEP 716.07 sets a high standard for such challenges: ‘Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence.’ This…
Read MoreHow can one appeal the merits of a 37 CFR 1.130 affidavit or declaration?
If you wish to appeal the merits of a 37 CFR 1.130 affidavit or declaration, the process is specified in MPEP 717.01(e): Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP § 1201. This means that if you disagree with…
Read MoreWhen is a 37 CFR 1.131(a) affidavit appropriate in a patent application?
A 37 CFR 1.131(a) affidavit is appropriate when an applicant needs to antedate a reference cited against their patent application. Specifically, it’s used to show prior invention before the effective date of the cited reference. According to MPEP 715.01: “An affidavit or declaration under 37 CFR 1.131(a) may be used, in the context of a…
Read MoreWhen is a declaration under 37 CFR 1.130(b) not available?
A declaration under 37 CFR 1.130(b) is not available in certain situations. The MPEP outlines two specific cases: If the disclosure was made more than one year before the effective filing date of the claimed invention. When the disclosure applied in a rejection is a U.S. patent or U.S. patent application publication that claims an…
Read MoreHow does the USPTO weigh evidence in affidavits or declarations under 37 CFR 1.132?
The United States Patent and Trademark Office (USPTO) carefully considers evidence presented in affidavits or declarations under 37 CFR 1.132. According to MPEP 716: ‘The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive…
Read MoreHow does the USPTO evaluate the credibility of affidavits or declarations?
How does the USPTO evaluate the credibility of affidavits or declarations? The United States Patent and Trademark Office (USPTO) carefully evaluates the credibility of affidavits or declarations submitted as evidence in patent applications. The MPEP 716.01(c) provides guidance on this matter: In assessing the probative value of an expert opinion, the examiner must consider the…
Read MoreHow does the USPTO evaluate affidavits or declarations in patent applications?
How does the USPTO evaluate affidavits or declarations in patent applications? The USPTO evaluates affidavits or declarations in patent applications based on their content and the circumstances in which they were made. According to MPEP 716.01(c), “Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs,…
Read MoreWhat types of evidence can be submitted in affidavits or declarations under 37 CFR 1.132?
Affidavits or declarations under 37 CFR 1.132 can include various types of evidence to support patentability. MPEP 716 outlines several categories of evidence that can be submitted: Unexpected results: Evidence that the claimed invention produces surprising or unexpected outcomes Commercial success: Proof of significant market success related to the claimed invention Long-felt need: Evidence that…
Read MoreHow are trade secret materials handled when submitted in amendments or arguments?
When trade secret, proprietary, or protective order materials are submitted as part of amendments, arguments for patentability, or affidavits, they are treated differently than those submitted under MPEP § 724.02. The MPEP states: If any trade secret, proprietary, and/or protective order materials are submitted in amendments, arguments in favor of patentability, or affidavits under 37…
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