How does the scope of commercial success evidence relate to patent claims?
The scope of commercial success evidence must align with the scope of the patent claims. This means that the commercial success should be attributable to the specific features claimed in the patent application, not to unclaimed features or broader aspects of the product or process. The MPEP 716.03(a) provides an example: “Evidence showing commercial success…
Read MoreWhat is the role of ‘comparative data’ in demonstrating unexpected results for patent applications?
What is the role of ‘comparative data’ in demonstrating unexpected results for patent applications? Comparative data plays a crucial role in demonstrating unexpected results for patent applications. The MPEP 716.02(b) states: “Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed…
Read MoreWhat are the conditions for restarting prioritized examination after a request for continued examination (RCE)?
What are the conditions for restarting prioritized examination after a request for continued examination (RCE)? Prioritized examination can be restarted after an RCE under specific conditions. According to MPEP 708.02(b): “If an applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a request for prioritized examination under 37 CFR 1.102(e) and…
Read MoreHow should an applicant respond to a rejection based on questioned test results?
When an applicant faces a rejection based on questioned test results, they have several options for response. According to MPEP 707.07(l): The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to…
Read MoreHow should an applicant respond to formal requirements in a patent application?
When responding to formal requirements in a patent application, an applicant should either: Comply with the formal requirements, or Specifically traverse each requirement not complied with The MPEP states: In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated…
Read MoreWhat are the requirements for a valid express abandonment of a patent application?
For a valid express abandonment of a patent application, the following requirements must be met: The abandonment must be in writing and signed by a party authorized to sign the application. The written abandonment must identify the application number and include a statement of intent to abandon the application. The abandonment must be filed in…
Read MoreWhat are the requirements for invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C)?
To invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C), an applicant must: Amend the specification to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). Submit the required statement to invoke the prior art exception. According to the MPEP, this statement…
Read MoreWhat are the requirements for exhibits filed with affidavits or declarations under 37 CFR 1.130?
Exhibits filed as part of an affidavit or declaration under 37 CFR 1.130 must comply with specific requirements. The MPEP states: Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.130, must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that…
Read MoreWhat are the requirements for a request for deferral of examination under 37 CFR 1.103(d)?
What are the requirements for a request for deferral of examination under 37 CFR 1.103(d)? A request for deferral of examination under 37 CFR 1.103(d) has specific requirements. According to MPEP 709: “A request for deferral of examination under 37 CFR 1.103(d) must include the following: (A) A period of suspension, in a whole number…
Read MoreWhat are the requirements for amending claims in response to a rejection?
When amending claims in response to a rejection, an applicant must: Clearly point out the patentable novelty they believe the claims present in view of the state of the art disclosed by the cited references or objections made Show how the amendments avoid such references or objections As stated in 37 CFR 1.111(c): In amending…
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