How does the MPEP address pre-AIA 35 U.S.C. 102 with respect to foreign patent dates?
The MPEP provides guidance on cases that discuss the date of patenting for foreign patents in the context of pre-AIA 35 U.S.C. 102. Specifically, MPEP 2126.01 states: “For a list of cases that discuss the date of patenting countries for purposes of pre-AIA 35 U.S.C. 102 in particular, see Chisum, Patents ยง 3.06[4] n.2.” (MPEP…
Read MoreWhat is the significance of the Phillips v. AWH Corp. case in claim interpretation?
The Phillips v. AWH Corp. case is a landmark decision that significantly impacts claim interpretation in patent examination and litigation. MPEP 2111 states: “The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized that the USPTO employs the ‘broadest reasonable interpretation’…
Read MoreWhat legal precedents support the application of intervening rights in reexamination?
Several important legal cases have established and reinforced the application of intervening rights in reexamination proceedings. The MPEP 2293 cites the following key cases: Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577, 3 USPQ2d 1771 (Fed. Cir. 1987) Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202 (Fed. Cir. 1986) Tennant Co.…
Read MoreWhat is the legal basis for using admissions as prior art?
The use of admissions as prior art in patent law is supported by case law. Two significant cases cited in the MPEP provide the legal basis for this practice: Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003) Constant v. Advanced Micro-Devices Inc., 848 F.2d…
Read MoreWhat are some examples of claim language that have been held to be indefinite due to exemplary phrasing?
The MPEP 2173.05(d) provides several examples of claim language that have been held to be indefinite due to exemplary phrasing: “R is halogen, for example, chlorine” “material such as rock wool or asbestos” (Ex parte Hall, 83 USPQ 38 (Bd. App. 1949)) “lighter hydrocarbons, such, for example, as the vapors or gas produced” (Ex parte…
Read MoreHow does In re Young affect patent claim interpretation?
In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states: In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine…
Read MoreWhat is the significance of In re Thorpe in product-by-process claim examination?
The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.…
Read MoreWhat is the significance of In re Otto in patent law?
In re Otto is a significant case in patent law, particularly for apparatus claims. According to MPEP 2115, the case established that: “[I]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963) The…
Read MoreWhat is the significance of the In re Monks case for patent reference dates?
The In re Monks case is significant in establishing the general rule for when a foreign patent becomes available as a reference. MPEP 2126.01 cites this case: “In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978).” (MPEP 2126.01) This case affirmed the principle that the date a foreign patent becomes available as a…
Read MoreHow does the In re Ekenstam case affect the availability of secret patents as references?
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case: “In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01) This case recognized that when a patent is kept secret even after rights are formally awarded,…
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