What is the significance of inventorship in overcoming a 35 U.S.C. 102(e) rejection?
What is the significance of inventorship in overcoming a 35 U.S.C. 102(e) rejection? Inventorship plays a crucial role in overcoming a 35 U.S.C. 102(e) rejection. The MPEP 715.01(a) states: “If the application and reference have at least one common inventor, the inventorship is not identical, and the effective filing date of the application is later…
Read MoreWhat is the exception to all inventors signing an affidavit or declaration under 37 CFR 1.131(a)?
What is the exception to all inventors signing an affidavit or declaration under 37 CFR 1.131(a)? While generally all inventors must sign an affidavit or declaration under 37 CFR 1.131(a), there is an important exception. According to MPEP 715.04: “An affidavit or declaration under 37 CFR 1.131(a) may be signed by less than all named…
Read MoreCan a patent examiner request information about inventorship?
Can a patent examiner request information about inventorship? Yes, a patent examiner can request information about inventorship during the examination process. The MPEP 704.11 explicitly states that examiners may request: “Names of persons to whom the invention was disclosed.” This information may be requested to: Clarify the correct inventorship of the application Determine if there…
Read MoreWhat is the significance of the EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case in MPEP 715.01(a)?
The EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case is cited in MPEP 715.01(a) to illustrate the importance of providing sufficient context and evidence when submitting inventor declarations. The case highlights that a bare assertion of inventorship, especially when made long after the invention, is not enough to overcome a rejection. The MPEP…
Read MoreWhat should be included in a 37 CFR 1.132 declaration when the reference is a U.S. patent or patent application publication?
When the reference used in a rejection is a U.S. patent or patent application publication, a 37 CFR 1.132 declaration should include specific information to effectively overcome the rejection. MPEP 715.01(a) states: Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a…
Read MoreHow can an inventor overcome a rejection based on a reference with a different inventive entity?
An inventor can overcome a rejection based on a reference with a different inventive entity in several ways: By filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention By filing an affidavit or declaration under 37 CFR 1.132 The MPEP states: An unequivocal declaration under 37 CFR 1.132 by S that he/she…
Read MoreWhat is the purpose of MPEP 715.01(a)?
MPEP 715.01(a) provides guidance on how to handle situations where a reference (patent or published application) names a different inventive entity with at least one common inventor compared to the application under examination. It specifically addresses how to overcome rejections based on such references using affidavits or declarations. The section states: When subject matter disclosed…
Read MoreWhen is a new oath or declaration required in a patent application?
A new oath or declaration is required in a patent application under the following circumstances: When filing a continuation or divisional application When filing a continuation-in-part application To correct inventorship in an application When the original oath or declaration was defective According to MPEP 602.02: ‘A new oath or declaration is required in a continuation…
Read MoreHow can inventorship be corrected in a patent application?
Inventorship in a patent application can be corrected through the following methods: Filing a request under 37 CFR 1.48 to correct or change inventorship. For applications filed on or after September 16, 2012, this request should include: An application data sheet (ADS) identifying each inventor by their legal name The processing fee set forth in…
Read MoreHow does a CPA affect inventorship?
The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application. The MPEP states, The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of…
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