What is the legal basis for the written description requirement?
The written description requirement is grounded in U.S. patent law, specifically in 35 U.S.C. 112(a). The MPEP 2163.01 references this legal basis: “If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack…
Read MoreWhat is the legal basis for rejecting claims due to undue multiplicity?
The legal basis for rejecting claims due to undue multiplicity is primarily 35 U.S.C. 112(b) (or pre-AIA 35 U.S.C. 112, second paragraph). As stated in MPEP 2173.05(n): “Undue multiplicity rejections based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.” This rejection is based on…
Read MoreWhat is the legal basis for rejecting omnibus claims?
The legal basis for rejecting omnibus claims is primarily 35 U.S.C. 112(b), which requires patent claims to particularly point out and distinctly claim the subject matter of the invention. According to MPEP 2173.05(r): “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is indefinite in that…
Read MoreWhat is the legal basis for prohibiting third-party submissions on patent term adjustment?
The legal basis for prohibiting third-party submissions on patent term adjustment is rooted in both statutory law and USPTO regulations. MPEP 2736 cites the following: “For patents granted on or after January 14, 2013, 37 CFR 1.705(d) implements the provisions of 35 U.S.C. 154(b)(4)(B) and provides that no submission or petition on behalf of a…
Read MoreWhat is the legal basis for granting a petition for stay in a patent term extension application?
The legal basis for granting a petition for stay in a patent term extension application is found in 37 CFR 1.182. According to MPEP 2765: “The Office analogizes such petitions for a stay in the patent term extension proceeding under 37 CFR 1.182 to requests for staying action in patent applications and for deferring issuance…
Read MoreWhat is the legal basis for appeals in patent reexamination proceedings?
The legal basis for appeals in patent reexamination proceedings is primarily found in U.S. statutes and has evolved over time. According to MPEP 2279: 1. For reexaminations filed on or after November 29, 1999, and commenced before September 16, 2012, the basis is “the version of 35 U.S.C. 141 and 35 U.S.C. 145 as they…
Read MoreWhat is the legal basis for ex parte reexamination requests?
The legal basis for ex parte reexamination requests is established in United States patent law. The MPEP section refers to this statute: “…request for ex parte reexamination filed under 35 U.S.C. 302…” 35 U.S.C. 302 is the specific statute that provides the legal foundation for ex parte reexamination requests. This law outlines the requirements and…
Read MoreWhat is the legal basis for the best mode requirement in patent law?
The best mode requirement in patent law is derived from 35 U.S.C. 112(a), which states: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which…
Read MoreWhat is the legal basis for using admissions as prior art?
The use of admissions as prior art in patent law is supported by case law. Two significant cases cited in the MPEP provide the legal basis for this practice: Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003) Constant v. Advanced Micro-Devices Inc., 848 F.2d…
Read MoreWhat is the legal basis for requiring sequence listings in PCT applications?
The requirement for sequence listings in PCT applications is based on specific rules and administrative instructions. According to MPEP 1877, the legal basis is found in PCT Rule 13ter.2: “PCT Rule 13ter.2” This rule provides the International Preliminary Examining Authority (IPEA) with the authority to request sequence listings. The MPEP further elaborates that these requirements…
Read More