How is common ownership defined for the purposes of 35 U.S.C. 102(b)(2)(C)?
Common ownership, as defined for the purposes of 35 U.S.C. 102(b)(2)(C), refers to the complete ownership of both the subject matter that would otherwise be prior art and the claimed invention by the same person(s) or organization(s). The MPEP states: The term ‘commonly owned’ is intended to mean that the subject matter that would otherwise…
Read MoreWhat is the significance of common assignee in patent applications?
Common assignee in patent applications refers to when a reference patent or application publication and the current application are owned by the same entity. However, this common ownership does not automatically negate the need for certain legal procedures. As stated in MPEP 715.01(b): The mere fact that the reference patent or application publication which shows…
Read MoreHow does the scope of commercial success evidence relate to patent claims?
The scope of commercial success evidence must be commensurate with the scope of the patent claims. The MPEP states: Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. (MPEP 716.03(a)) This means that the commercial success must be due to the features claimed in the patent application, not unclaimed…
Read MoreWhat is the nexus requirement for commercial success in patent applications?
The nexus requirement for commercial success in patent applications refers to the need for a factually and legally sufficient connection between the evidence of commercial success and the claimed invention. As stated in the MPEP, The term ‘nexus’ designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention…
Read MoreWho bears the burden of proof for establishing a nexus between commercial success and the claimed invention?
According to the MPEP, the burden of proof for establishing a nexus between commercial success and the claimed invention lies with the applicant. The Federal Circuit has stated: Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success. (MPEP 716.03) This means that applicants asserting commercial success to support nonobviousness…
Read MoreIs commercial success abroad relevant to patent applications in the United States?
Yes, commercial success abroad is relevant to patent applications in the United States. The MPEP clearly states: Commercial success abroad, as well as in the United States, is relevant in resolving the issue of nonobviousness. (MPEP 716.03) This means that applicants can use evidence of commercial success from both domestic and international markets to support…
Read MoreCan a comparison with a commercial product be used to show unexpected results in a patent application?
While it’s possible to use a comparison with a commercial product to show unexpected results, it’s generally not considered sufficient on its own. The MPEP 716.02(e) provides guidance on this: ‘Comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing…
Read MoreHow does commercial activity affect diligence in patent applications?
How does commercial activity affect diligence in patent applications? Commercial activity can significantly impact the evaluation of diligence in patent applications. The MPEP 715.07(a) provides guidance on this matter: ‘Work relied upon to show reasonable diligence must be directly related to the reduction to practice of the invention in question. For example, time spent in…
Read MoreWhat is a ‘claimed invention’ in patent law?
The term ‘claimed invention’ is defined in 35 U.S.C. 100(j) as follows: The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent. This definition emphasizes that the ‘claimed invention’ refers specifically to the subject matter that is described and defined in the claims of…
Read MoreHow does cancellation of claims affect the date of abandonment in a patent application?
The cancellation of claims can affect the date of abandonment in a patent application as follows: If all pending claims are canceled, the application becomes abandoned on the date the last claim is canceled. This applies even if the cancellation occurs before the expiration of the period for reply. MPEP 711.04(a) clearly states: ‘The date…
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