How does the USPTO determine what invention is sought to be patented?
How does the USPTO determine what invention is sought to be patented? According to MPEP 2103, the USPTO determines what invention is sought to be patented by carefully analyzing the disclosure and claims of the patent application. The MPEP states: “The claimed invention is defined by the words of the claims interpreted in light of…
Read MoreWhat is required to satisfy 35 U.S.C. 112 regarding how to use a claimed invention?
To satisfy 35 U.S.C. 112 regarding how to use a claimed invention, the following conditions are sufficient: A statement of utility in the specification that contains a connotation of how to use The art recognizes that standard modes of administration are known and contemplated As stated in the MPEP, If a statement of utility in…
Read MoreHow can an applicant show possession of the claimed invention?
According to MPEP 2163.02, an applicant can show possession of the claimed invention in several ways: Describing the claimed invention with all of its limitations using words, structures, figures, diagrams, and formulas Description of an actual reduction to practice Showing that the invention was “ready for patenting” through disclosure of drawings or structural chemical formulas…
Read MoreWhat is the focus of the utility requirement in patent law?
The focus of the utility requirement is on the claimed invention. As stated in the MPEP, The claimed invention is the focus of the assessment of whether an applicant has satisfied the utility requirement. This means that each claim must be evaluated individually for compliance with the utility requirement under 35 U.S.C. 101. Generally, a…
Read MoreDoes the AIA 35 U.S.C. 102(b)(2)(B) exception require a comparison with the claimed invention?
No, the AIA 35 U.S.C. 102(b)(2)(B) exception does not require a comparison with the claimed invention. The MPEP clearly states: “AIA 35 U.S.C. 102(b)(2)(B) does not discuss ‘the claimed invention’ with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent…
Read MoreHow should the differences between prior art and claimed invention be assessed?
The differences between the prior art and the claims must be assessed by considering the claimed invention as a whole, not just individual differences. As stated in MPEP 2141.02: “In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been…
Read MoreHow does AIA 35 U.S.C. 103 differ in terminology from pre-AIA 35 U.S.C. 103?
AIA 35 U.S.C. 103 uses slightly different terminology compared to pre-AIA 35 U.S.C. 103, but this change does not affect the approach to determining obviousness. The MPEP states: “AIA 35 U.S.C. 103 requires consideration of ‘the differences between the claimed invention and the prior art,’ while pre-AIA 35 U.S.C. 103 refers to ‘the differences between…
Read MoreHow does the AIA define “effective filing date” for a claimed invention?
The America Invents Act (AIA) defines the “effective filing date” for a claimed invention as the earliest of: The actual filing date of the patent or application containing the claimed invention; or The filing date of the earliest application for which the patent or application is entitled to claim a right of priority or the…
Read MoreWhat is a ‘claimed invention’ in patent law?
The term ‘claimed invention’ is defined in 35 U.S.C. 100(j) as follows: The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent. This definition emphasizes that the ‘claimed invention’ refers specifically to the subject matter that is described and defined in the claims of…
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