What are the requirements for a compliant Prioritized Examination request?
A compliant Prioritized Examination request must meet the following requirements: The application must be a utility or plant nonprovisional application. The request must be filed with the application or with a Request for Continued Examination (RCE). The application must contain no more than 4 independent claims and 30 total claims. The request must include the…
Read MoreHow does a prior public disclosure affect the grace period under AIA?
Under the America Invents Act (AIA), a prior public disclosure by the inventor or joint inventor can affect the grace period, providing protection against certain disclosures being used as prior art. According to MPEP 717.01(b): “The grace period provision of AIA 35 U.S.C. 102(b)(1)(B) applies if the ‘subject matter disclosed [in the intervening disclosure] had,…
Read MoreHow does the USPTO handle prior art exceptions after final rejection?
The USPTO gives special consideration to submissions concerning prior art exceptions even after a final rejection. As stated in MPEP 714.12: Applicant’s submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made. If…
Read MoreHow can the prior art exception under 35 U.S.C. 102(b)(2)(C) be invoked for joint research agreements?
The prior art exception under 35 U.S.C. 102(b)(2)(C) can also be invoked for joint research agreements. The MPEP outlines the requirements: In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) must provide a statement that the disclosure of the…
Read MoreWhat is the prior art exception under 35 U.S.C. 102(b)(2)(C)?
The prior art exception under 35 U.S.C. 102(b)(2)(C) allows certain disclosures to be excepted as prior art if they were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. This exception applies to disclosures that would otherwise…
Read MoreHow can I prevent a holding of abandonment in my patent application?
How can I prevent a holding of abandonment in my patent application? To prevent a holding of abandonment in your patent application, you should: File all required responses within the specified time periods. If needed, request extensions of time before the original deadline expires. Keep accurate records of all communications with the USPTO. Monitor the…
Read MoreHow should applicants present comparative data to support claims of unexpected results?
How should applicants present comparative data to support claims of unexpected results? Presenting comparative data effectively is crucial when asserting unexpected results in patent applications. The MPEP 716.02 provides guidance on this matter: The claimed invention may be compared with the closest prior art to demonstrate unexpected results. To effectively present comparative data, applicants should:…
Read MoreWhat happens if a preliminary amendment cancels all claims in a patent application?
If a preliminary amendment cancels all claims in a patent application without presenting new or substitute claims, it will not be entered by the USPTO. The MPEP states, A preliminary amendment filed in compliance with 37 CFR 1.121 will be entered unless it is disapproved by the Director. A preliminary amendment will be disapproved by…
Read MoreHow do the filing date requirements differ for applications filed before December 18, 2013?
The filing date requirements for applications filed before December 18, 2013, were more stringent compared to those filed after this date due to the implementation of the Patent Law Treaties Implementation Act (PLTIA). The MPEP states: For applications filed under pre-PLT (AIA) 35 U.S.C. 111 prior to December 18, 2013, a filing date is assigned…
Read MoreCan post-filing evidence be used to support sufficiency of disclosure in a patent application?
Can post-filing evidence be used to support sufficiency of disclosure in a patent application? The use of post-filing evidence to support sufficiency of disclosure in a patent application is generally not accepted by the USPTO. According to MPEP 716.09, “Evidence to supplement a specification which on its face appears insufficient to enable one skilled in…
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