What can be cited to the USPTO for placement into patent files?
According to MPEP 2202, two types of information can be cited to the USPTO for placement into patent files: Prior art in the form of patents or printed publications Written statements made by the patent owner concerning the scope of the claims The MPEP states: “Prior art in the form of patents or printed publications…
Read MoreCan a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?
Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…
Read MoreHow does the USPTO determine if a claim is broader than the enabling disclosure?
The USPTO determines if a claim is broader than the enabling disclosure by considering two main factors: How broad the claim is with respect to the disclosure Whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation According to the MPEP, The propriety of a…
Read MoreWhat types of submissions are allowed under 37 CFR 1.501(a)?
37 CFR 1.501(a) allows for two types of submissions: Prior art submissions: These include patents and printed publications that the submitter believes are pertinent and applicable to the patent, and may have a bearing on the patentability of any claims. Patent owner statements: These are statements made by the patent owner in federal court proceedings…
Read MoreWhat is the significance of transitional phrases in patent claims?
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from…
Read MoreWhat role does the specification play in interpreting patent claims?
What role does the specification play in interpreting patent claims? The specification plays a crucial role in interpreting patent claims. According to MPEP 2173.01: “The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms.“ This means that:…
Read MoreHow does the identification of a single inoperative embodiment affect claim enablement?
The identification of a single inoperative embodiment among many operable embodiments does not necessarily render a claim broader than the enabled scope. The MPEP 2164.08(b) references the In re Angstadt case: “A disclosure of a large number of operable embodiments and the identification of a single inoperative embodiment did not render a claim broader than…
Read MoreWhat is the significance of “transitional phrases” in patent claim construction?
Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.” The significance of transitional phrases includes:…
Read MoreWhat is the significance of “identical” claims in patent reexamination and intervening rights?
What is the significance of “identical” claims in patent reexamination and intervening rights? The concept of “identical” claims is crucial in determining whether intervening rights apply in patent reexamination. According to MPEP 2293: “A claim of the patent which is substantially identical to a claim of the original patent (for example, amended to improve clarity)…
Read MoreWhat is the scope of inter partes reexamination?
The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…
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