What situations are not protected by the 35 U.S.C. 121 prohibition against nonstatutory double patenting rejections?
The MPEP outlines several situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply: When the applicant voluntarily files two or more applications without a restriction requirement by the examiner When the claims are not consonant with the original restriction requirement When the restriction requirement was withdrawn due to…
Read MoreWhen can an examiner make changes to a patent application without an examiner’s amendment?
There are specific circumstances where an examiner can make changes to a patent application without using an examiner’s amendment. According to MPEP 1302.04, these exceptions include: Renumbering claims in accordance with 37 CFR 1.126 Correcting erroneous citations on an Information Disclosure Statement Correcting non-compliant amendments filed under 37 CFR 1.312 Canceling claims directed to a…
Read MoreDoes the manner of disclosure matter for invoking the 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) exceptions?
No, the manner or mode of disclosure is not critical when invoking the exceptions under 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). The MPEP clarifies: “The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical.” This means: The subject matter doesn’t need to be disclosed in the…
Read MoreAre there any exceptions to the standard reply periods for USPTO Office actions?
Are there any exceptions to the standard reply periods for USPTO Office actions? Yes, there are exceptions to the standard reply periods for USPTO Office actions. The MPEP 704.13 outlines several situations where different time periods may apply: “Shortened statutory periods are those so designated in Office actions. The time periods set forth on form…
Read MoreAre there any exceptions to the rule of two periods running simultaneously in patent applications?
Yes, there is an exception involving suggested claims. According to MPEP 710.04: “For an exception involving suggested claims, see MPEP Chapter 2300.” This exception relates to interference proceedings, which are detailed in MPEP Chapter 2300. In such cases, the handling of suggested claims may affect the running periods differently than in standard examination scenarios. To…
Read MoreWhat are the exceptions to using a shortened statutory period in patent examinations?
There are specific situations where a shortened statutory period is not used in patent examinations. According to MPEP 710.02(b), these exceptions include: Actions on amendments submitted after final rejection (except when the amendment is fully responsive and could place the application in condition for allowance) Ex parte Quayle actions When the application is ready for…
Read MoreAre there exceptions to comprehensive patent examination?
Yes, there are exceptions to comprehensive patent examination. MPEP 707.07(g) outlines specific situations where limiting examination to a particular issue may be appropriate: When an application is too informal for a complete action on the merits (See MPEP § 702.01) When there is an undue multiplicity of claims and no successful telephone request for election…
Read MoreWhen is a declaration under 37 CFR 1.130(b) not available?
A declaration under 37 CFR 1.130(b) is not available in certain situations. The MPEP outlines two specific cases: If the disclosure was made more than one year before the effective filing date of the claimed invention. When the disclosure applied in a rejection is a U.S. patent or U.S. patent application publication that claims an…
Read MoreHow do species and genus disclosures affect the application of 35 U.S.C. 102(b)(2)(B) exceptions?
The relationship between species and genus disclosures can significantly affect the application of 35 U.S.C. 102(b)(2)(B) exceptions. The MPEP provides guidance on different scenarios: Inventor discloses species, intervening disclosure is genus: “If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO…
Read MoreWhat does ‘same subject matter’ mean in the context of 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) exceptions?
The concept of ‘same subject matter’ is crucial in applying the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B). According to the MPEP: “The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure.”…
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