What is an affidavit or declaration under 37 CFR 1.132?
An affidavit or declaration under 37 CFR 1.132 is a form of evidence submitted to traverse rejections or objections in a patent application or reexamination. The MPEP states: When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a…
Read MoreHow does the USPTO view opinion testimony in patent interference cases?
The USPTO’s view on opinion testimony in patent interference cases has evolved over time. The MPEP 716.09 references a significant case that reexamined this issue: Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence. The…
Read MoreHow does the USPTO evaluate ‘synergistic effects’ as evidence of unexpected results?
How does the USPTO evaluate ‘synergistic effects’ as evidence of unexpected results? The USPTO considers synergistic effects as a potential form of unexpected results, which can be used to support patentability. According to MPEP 716.02(a)(I): “Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the…
Read MoreHow can expert skepticism be used to support a patent application?
Expert skepticism can be a powerful tool to support a patent application, particularly in demonstrating nonobviousness. The MPEP provides guidance on this: The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the…
Read MoreWhat is the significance of timely filing evidence in patent examination?
What is the significance of timely filing evidence in patent examination? Timely filing of evidence is crucial in patent examination. According to MPEP 716.01(B), “To be of probative value, any secondary evidence must be related to the claimed invention (nexus required).” This means that evidence submitted must be directly relevant to the claimed invention and…
Read MoreWhat is the significance of long-felt need in patent examination?
The significance of long-felt need in patent examination lies in its ability to demonstrate non-obviousness of an invention. According to MPEP 716.04, “Evidence of a long-felt need may be presented for purposes of rebutting a prima facie case of obviousness.” Long-felt need is particularly valuable when: The need has been recognized and persistent The need…
Read MoreWhat is the significance of commercial success in patent applications?
Commercial success can be a significant factor in patent applications, particularly when addressing obviousness rejections. MPEP 716.03 states: Evidence of commercial success, when present, is to be considered in determining the issue of obviousness of a claimed invention. To effectively use commercial success as evidence: The success must be linked to the claimed invention, not…
Read MoreWhat is the role of skepticism of experts in patent applications?
Skepticism of experts can play a significant role in patent applications, particularly in demonstrating non-obviousness. MPEP 716.05 states: Skepticism expressed by experts in the field of the invention is relevant to the issue of nonobviousness. To effectively use skepticism of experts as evidence: Provide documented evidence of skepticism from recognized experts in the field Show…
Read MoreWhat is the role of attorney arguments in patent examination?
What is the role of attorney arguments in patent examination? Attorney arguments play a significant role in patent examination, but they are not considered evidence. According to MPEP 716.01(C)(II), “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).”…
Read MoreWhat is the purpose of affidavits or declarations under 37 CFR 1.132?
Affidavits or declarations under 37 CFR 1.132 serve to provide evidence to traverse rejections or objections in patent applications. The MPEP 716 states: ‘The purpose of filing affidavits or declarations under 37 CFR 1.132 is to traverse the rejections or objections of record.’ These affidavits or declarations can be used to present various types of…
Read More