What is required for conception to be legally complete?

For conception to be legally complete, several elements must be present according to MPEP 2138.04: Definite and permanent idea: The inventor must have formed a definite and permanent idea of the complete and operable invention. Every feature of the invention: The conception must include every feature or limitation of the invention as claimed. Enablement: The…

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What happens if a juristic entity is incorrectly listed as an inventor in an international design application?

If a juristic entity is incorrectly listed as an inventor in an international design application designating the United States, it will result in a rejection of the application. The MPEP 2920.01 provides specific guidance on this issue: “Where a nonprovisional international design application identifies a juristic entity as an inventor, Form Paragraph 29.04 should be…

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What issues can be considered in ex parte reexamination ordered under 35 U.S.C. 304?

Ex parte reexamination ordered under 35 U.S.C. 304 is limited to considerations of prior art patents and printed publications. The MPEP states: “Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.” However, certain ancillary matters may be considered,…

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What is the difference between inventorship and ownership under Pre-AIA 35 U.S.C. 102(f)?

What is the difference between inventorship and ownership under Pre-AIA 35 U.S.C. 102(f)? Under Pre-AIA 35 U.S.C. 102(f), there is an important distinction between inventorship and ownership: Inventorship refers to the person or persons who actually conceived the invention. Ownership refers to the legal rights to the invention, which may be assigned or transferred. The…

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What is the significance of inventorship in continuation-in-part applications?

Inventorship in continuation-in-part (CIP) applications has unique implications for prior art determination. The MPEP 2136.04 states: “If the application is a continuation-in-part of, or claims the benefit of the filing date of, a parent application naming A as the inventor, and the parent application was filed by A with a claim that was originally invented…

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What should I consider regarding inventorship when responding to a restriction requirement in an international design application?

When responding to a restriction requirement in an international design application, it’s important to consider the potential need to correct inventorship. This is particularly relevant if you’re cancelling non-elected designs, as it may affect who qualifies as an inventor for the remaining design(s). According to MPEP 2920.05(b): “Applicants should consider the need to correct inventorship…

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How is inventorship determined in an international design application designating the United States?

According to MPEP 2920.01, inventorship in an international design application designating the United States is determined based on the creator or creators listed in the publication of the international registration. Specifically, the MPEP states: “Pursuant to 37 CFR 1.41(f), the inventorship of an international design application designating the United States is the creator or creators…

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