What is the significance of the In re Wands case in patent law?
The In re Wands case (858 F.2d 731, Fed. Cir. 1988) is significant in patent law because it established the factors used to determine whether a disclosure satisfies the enablement requirement. As stated in MPEP 2164.01(a): “In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as…
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 are some ways to demonstrate “possession” of an invention?
MPEP 2163.02 outlines several ways to demonstrate “possession” of an invention: Description of an actual reduction to practice Showing that the invention was “ready for patenting” Disclosure of drawings or structural chemical formulas that show the invention was complete Describing distinguishing identifying characteristics sufficient to show possession The MPEP cites several cases, including Pfaff v.…
Read MoreWhat is the “fundamental factual inquiry” in written description issues?
According to MPEP 2163.02, the fundamental factual inquiry in written description issues is: “whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, inventor was in possession of the invention as now claimed.“ This inquiry is based on the Federal Circuit case Vas-Cath, Inc. v.…
Read MoreIs an appeal to a U.S. District Court available in inter partes reexamination proceedings?
No, an appeal to a U.S. District Court is not available in inter partes reexamination proceedings. The MPEP 2683 clearly states: “The remedy by civil action under 35 U.S.C. 145 is not available to the patent owner and the third party requester in an inter partes reexamination proceeding. Patent owners and third party requesters dissatisfied…
Read MoreWhat is the significance of the In re Construction Equipment Company case for reexamination proceedings?
The case of In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011) is significant for reexamination proceedings as it reinforces the principle that neither claim preclusion (res judicata) nor issue preclusion (collateral estoppel) typically bar reexamination. According to MPEP § 2659: “See also In re Construction Equipment Company, 665 F.3d…
Read MoreWhat is the role of the USPTO Solicitor in patent litigation?
The USPTO Solicitor plays a crucial role in patent litigation, particularly in cases involving the USPTO or appeals of USPTO decisions. Based on MPEP 1002.02(k)(3), the Solicitor’s responsibilities include: Deciding on petitions for extension of time in court matters related to 35 U.S.C. 142, 145, and 146 Handling petitions relating to ex parte questions in…
Read MoreWhat types of time extension petitions are decided by the USPTO General Counsel?
The USPTO General Counsel decides on specific types of time extension petitions related to appeals and civil actions. According to MPEP 1002.02(k)(1): “Petitions (under 37 CFR 90.3(c) or 37 CFR 2.145(e)) seeking to extend the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing…
Read MoreCan I request a rehearing after a PTAB decision?
Yes, you can request a rehearing after a Patent Trial and Appeal Board (PTAB) decision. Here are key points to consider: A request for rehearing must be filed within 30 days of the original PTAB decision. Filing a rehearing request extends the time for seeking judicial review. The rehearing request should address specific points believed…
Read MoreCan prosecution be reopened after a Federal Circuit decision?
Yes, in some situations, prosecution can be reopened after a Federal Circuit decision, but it requires special approval. According to MPEP 1216.01: “In some situations it may be necessary to reopen prosecution of an application after a court decision. Any Office action proposing to reopen prosecution after a court decision must be forwarded to the…
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