What 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…
Read MoreCan original disclosure information be expunged from a patent application?
No, original disclosure information cannot be expunged from a patent application. According to 37 CFR 1.59(a)(2): Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file. This rule ensures that the…
Read MoreWhat is the significance of the Certificate of Mailing in patent application procedures?
What is the significance of the Certificate of Mailing in patent application procedures? The Certificate of Mailing plays a crucial role in patent application procedures, particularly in relation to response deadlines. According to MPEP 710.02: “The Certificate of Mailing procedure does not apply to time periods set in the Office action — it applies only…
Read MoreCan an express abandonment be rescinded or withdrawn?
Can an express abandonment be rescinded or withdrawn? Generally, an express abandonment cannot be rescinded or withdrawn once it has been recognized by the Office. The MPEP 711.01 states: ‘Once an express abandonment is recognized by the Office, the file will be processed as an abandoned application and the abandonment cannot be withdrawn.’ This means…
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