How does MPEP 2116 relate to patent examination?
MPEP 2116, titled “Novel, Nonobvious Starting Material or End Product,” is part of the broader chapter on patentability in the Manual of Patent Examining Procedure. While the specific content of this section is not provided, it likely guides patent examiners in assessing the patentability of processes involving novel or nonobvious starting materials or end products.…
Read MoreDoes the written description need to be literal to satisfy the requirement?
No, the written description does not need to be literal to satisfy the requirement. As stated in MPEP 2163.02: “The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.“ However, it’s important to note that…
Read MoreHow is inventorship corrected in an inter partes reexamination proceeding?
Correction of inventorship in an inter partes reexamination proceeding follows the same process as in an ex parte reexamination proceeding. The Manual of Patent Examining Procedure (MPEP) § 2666.03 states: “Correction of inventorship in an inter partes reexamination proceeding is effected in the same manner that correction of inventorship in an ex parte reexamination proceeding…
Read MoreWhat is the role of an Interference Practice Specialist (IPS) in post-interference examination?
An Interference Practice Specialist (IPS) plays a crucial role in post-interference examination, particularly when dealing with claims from a losing party. According to MPEP 2308.03: “The examiner should consult with an Interference Practice Specialist (IPS) before allowing a claim to a losing party that was added or amended during post-interference examination.” This consultation is important…
Read MoreWhat is interference estoppel in patent law?
Interference estoppel in patent law refers to the principle that prevents a party from re-litigating an issue they lost in a previous interference proceeding. As stated in MPEP 2308.03: “If a party loses on an issue, it may not re-litigate the issue before the examiner or in a subsequent Board proceeding.” There are two main…
Read MoreCan inoperative prior art be used in patent rejections?
Yes, inoperative prior art can be used in patent rejections. The MPEP 2121.01 clearly states: “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” This principle has several important implications: An inoperative device can still provide valuable teachings about its components or methods. The overall inoperability of…
Read MoreWhere can I find information on the former practice of inter partes reexamination?
For those seeking information on the former practice of inter partes reexamination, the MPEP provides two main resources: Revision 7 of the 8th Edition of the MPEP The Federal Register notice titled “Revision of Standard for Granting an Inter Partes Reexamination Request” (76 FR 59055, September 23, 2011) These resources provide comprehensive guidance on how…
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 MoreWhere can I find guidance on the former inter partes reexamination practice?
Guidance on the former inter partes reexamination practice can be found in two main sources: Revision 7 of the 8th Edition of the MPEP The Federal Register notice titled “Revision of Standard for Granting an Inter Partes Reexamination Request,” published on September 23, 2011 As stated in MPEP 2611, “Guidance on the former practice is…
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