What happens to added or amended claims during an interference?
When claims are added or amended during an interference, they are not immediately entered into the application. The MPEP 2308.02 explains: “A copy of the paper adding or amending the claim will be placed in the official record of the application, but not entered. A decision on the motion is entered in the official record…
Read MoreHow can a patentee add or amend claims during an interference?
A patentee can add or amend claims during an interference by filing a reissue application. According to MPEP 2308.02: “A patentee may file a reissue application in support of a motion to add or amend a claim.” This process allows patentees to modify their claims in response to issues raised during the interference proceeding, potentially…
Read MoreCan a patent examiner suggest amendments to claims to address written description issues?
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward. The MPEP 2163.04 states: “When appropriate, suggest amendments to the claims which can be supported by the application’s written…
Read MoreHow should patent examiners address antecedent basis issues?
Patent examiners should address antecedent basis issues in a constructive manner. The MPEP 2173.05(e) provides guidance: “The examiner’s task of making sure the claim language complies with the requirements of the statute should be carried out in a positive and constructive way, so that minor problems can be identified and easily corrected, and so that…
Read MoreHow can an applicant overcome a rejection of a product-by-process claim?
An applicant has several options to overcome a rejection of a product-by-process claim. According to MPEP 2113: “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of…
Read MoreCan a lack of antecedent basis be overcome during patent prosecution?
Can a lack of antecedent basis be overcome during patent prosecution? Yes, a lack of antecedent basis can often be overcome during patent prosecution. The MPEP 2173.05(e) provides guidance on this matter: “A claim is not per se indefinite if the body of the claim recites additional elements which do not appear in the preamble.…
Read MoreHow can an applicant overcome an indefiniteness rejection based on relative terminology?
An applicant can overcome an indefiniteness rejection based on relative terminology in several ways. According to MPEP 2173.05(b), “During prosecution, an applicant may overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure.” This can…
Read MoreWhen does omitting a limitation violate the written description requirement?
Omitting a limitation can violate the written description requirement when the omitted element is described as essential or critical to the invention in the original disclosure. The MPEP 2163.05 states: “A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the…
Read MoreWhat is the “omission of a limitation” in patent claims?
The “omission of a limitation” in patent claims refers to the removal of a previously claimed element or feature. The MPEP 2163.05 states: “An amendment to a claim may broaden the claim by omitting a limitation; however, the omission of a limitation is not new matter if the broad claim is fully supported by the…
Read MoreCan new matter be added to claims during ex parte reexamination?
Can new matter be added to claims during ex parte reexamination? No, new matter cannot be added to claims during ex parte reexamination: The MPEP 2258 clearly states: “No amendment may introduce new matter into the disclosure of the patent.” This prohibition is based on 35 U.S.C. 305, which specifies that no proposed amended or…
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