What are excess claims fees in patent applications?
Excess claims fees are charges that applicants must pay for claims that exceed certain thresholds in a patent application. According to MPEP 714.10: Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). These fees are…
Read MoreAre there any exceptions to the rule of two periods running simultaneously in patent applications?
Yes, there is an exception involving suggested claims. According to MPEP 710.04: “For an exception involving suggested claims, see MPEP Chapter 2300.” This exception relates to interference proceedings, which are detailed in MPEP Chapter 2300. In such cases, the handling of suggested claims may affect the running periods differently than in standard examination scenarios. To…
Read MoreWhat happens if the number of claims exceeds the limit during prioritized examination?
What happens if the number of claims exceeds the limit during prioritized examination? If the number of claims exceeds the limit during prioritized examination, the application may lose its prioritized status. According to MPEP 708.02(b): “If an amendment is filed subsequent to the filing date of an application under prioritized examination that results in more…
Read MoreWhat are examples of trade secret materials submitted under MPEP § 724.02?
What are examples of trade secret materials submitted under MPEP § 724.02? According to MPEP 724.03, examples of trade secret materials that may be submitted under MPEP § 724.02 include: A new drug product A new method of making a drug product Drafts of proposed publications A computer program Customer lists Chemical or other compositions…
Read MoreWhat should examiners do when they identify patentable subject matter that hasn’t been claimed?
When examiners identify patentable subject matter that hasn’t been claimed, they should take a constructive approach. The MPEP advises: “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note…
Read MoreHow does an examiner determine if a reply is complete under MPEP 704.14(b)?
According to MPEP 704.14(b), an examiner determines if a reply is complete by evaluating whether it addresses all the requirements set forth in the previous Office action. The MPEP states: Direct quote: “The examiner should determine whether the reply: (A) meets the requirements of 37 CFR 1.111, including: (1) An amendment to the claims or…
Read MoreCan evidence of unexpected results be presented after filing a patent application?
Yes, evidence of unexpected results can be presented after filing a patent application. MPEP 716.02(f) clarifies that evidence and arguments directed to advantages not disclosed in the original specification should not be disregarded. The Federal Circuit in In re Chu explicitly stated: “We have found no cases supporting the position that a patent applicant’s evidence…
Read MoreWhat evidence is required to establish non-receipt of an Office action in a patent application?
What evidence is required to establish non-receipt of an Office action in a patent application? To establish non-receipt of an Office action in a patent application, the USPTO requires specific evidence. This is crucial when filing a petition to withdraw the holding of abandonment based on non-receipt. According to MPEP 711.03(c): ‘The showing required to…
Read MoreWhat evidence is required to establish long-felt need in a patent application?
To establish long-felt need in a patent application, specific types of evidence are required. The MPEP 716.04 outlines the following key requirements: Objective evidence: The long-felt need must be supported by evidence, not just assertions. Persistent need: Show that the need has been recognized and persistent for a significant time. Unsuccessful attempts: Demonstrate that others…
Read MoreWhat evidence is needed to prove commercial success in patent applications?
To prove commercial success as evidence of non-obviousness in patent applications, applicants must provide substantial and credible evidence. According to MPEP 716.03(a), the following types of evidence are typically required: Sales figures: Actual sales data for the product embodying the claimed invention Market share: Information on the product’s share of the relevant market Growth in…
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