What is the difference between claims and species in patent law?
In patent law, claims and species are distinct concepts. According to MPEP 806.04(e): “Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim).” In other words, claims define…
Read MoreWhat are Article 19 amendments in PCT applications?
Article 19 amendments are amendments to the claims of a PCT application that can be made after the international search report has been established. According to the MPEP, “Article 19 amendments are exclusively amendments to the claims and these amendments can only be made after the international search report has been established.” These amendments are…
Read MoreHow should amendments be made in reissue applications?
How should amendments be made in reissue applications? Amendments in reissue applications should be made in accordance with MPEP 1453. The MPEP states: “Amendments in reissue applications are made pursuant to 37 CFR 1.121(i).” This means that amendments in reissue applications follow specific rules: All amendments must be made relative to the patent specification and…
Read MoreCan amendments be included in a patent application publication?
Yes, amendments can be included in a patent application publication if they are submitted in sufficient time and in the correct format. According to MPEP 1121: “The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the…
Read MoreHow are amendments to the claims treated in U.S. national stage applications?
How are amendments to the claims treated in U.S. national stage applications? Amendments to the claims in U.S. national stage applications are treated differently depending on when they are submitted. The MPEP provides specific guidance: “Amendments to the claims submitted after completion of the requirements for entry into the national stage will be considered for…
Read MoreWhat constitutes ‘new matter’ in a patent application?
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a): Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing…
Read MoreWhat constitutes a complete patent application for filing date purposes?
A complete patent application for filing date purposes must include: A specification containing a description as per 37 CFR 1.71 At least one claim (for nonprovisional design applications only) as per 37 CFR 1.75 Any drawings required by 37 CFR 1.81(a) As stated in the MPEP: “The filing date of the provisional or nonprovisional application…
Read MoreWhat are the requirements for a complete patent application?
What are the requirements for a complete patent application? A complete patent application must include the following elements: Specification (including a description and claim(s)) Drawing(s) (when necessary) Oath or declaration Filing, search, and examination fees As stated in MPEP 601.01: ‘The application for patent as filed must include a specification as prescribed by 35 U.S.C.…
Read MoreCan the filing fee, oath or declaration, and claims be submitted after the initial filing of a nonprovisional application?
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so: These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts. A surcharge may be…
Read MoreHow does MPEP 608.04(a) define ‘new matter’ in patent applications?
How does MPEP 608.04(a) define ‘new matter’ in patent applications? MPEP 608.04(a) defines new matter as any content added to the specification, claims, or drawings after the application filing date that was not present on the original filing date. Specifically, the MPEP states: “Matter not present on the filing date of the application in the…
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