What is the significance of the one-year time frame in MPEP 715.05?
The one-year time frame is crucial in determining how to overcome a reference in patent applications subject to pre-AIA 35 U.S.C. 102. According to MPEP 715.05: “When the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1…
Read MoreHow can an applicant obtain copies of papers submitted to the USPTO?
If an applicant needs copies of papers submitted to the USPTO, they can request them from the Office. However, this service is not free. As stated in Form Paragraph 7.214 of MPEP 719.01: If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for…
Read MoreWhat is the ‘nexus’ requirement for commercial success in patent applications?
The ‘nexus’ requirement is crucial when asserting commercial success as evidence of non-obviousness in patent applications. According to MPEP 716.03(a): The term ‘nexus’ designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. To establish…
Read MoreWhat happens when two different periods for reply are running against a patent application?
When two different periods for reply are running against a patent application, the following applies: The first period is typically the regular statutory period. The second period is usually set by a subsequent Office action. The running of the first period is not suspended or affected by an ex parte limited time action or an…
Read MoreHow does MPEP 715.05 apply to applications subject to the AIA?
MPEP 715.05 has limited applicability to applications subject to the America Invents Act (AIA). The section specifically states: “[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).” For applications subject…
Read MoreIs MPEP 715.01(d) applicable to AIA (America Invents Act) applications?
No, MPEP 715.01(d) is generally not applicable to applications subject to the first inventor to file provisions of the AIA (America Invents Act). The section explicitly states: “[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a…
Read MoreWhat is the purpose of MPEP 714.03(a) regarding supplemental amendments?
MPEP 714.03(a) outlines the guidelines for handling supplemental amendments in patent applications. Its primary purpose is to: Define when supplemental amendments are considered entered or not entered Explain the treatment of supplemental amendments filed after the mailing of an Office action Provide guidance on how examiners should respond to such amendments According to MPEP 714.03(a):…
Read MoreWhat is the purpose of MPEP 704?
MPEP 704 focuses on two crucial aspects of patent examination: search and requirements for information. This section provides guidance to patent examiners on conducting thorough prior art searches and requesting additional information from applicants when necessary to properly examine patent applications. According to MPEP 704, the primary objectives are to ensure a comprehensive examination of…
Read MoreWhen can an amendment after notice of allowance be filed?
An amendment after notice of allowance must be filed before or with the payment of the issue fee. The MPEP 714.16 states: “Finally, it is pointed out that an amendment under 37 CFR 1.312 must be filed on or before the date the issue fee is paid, except where the amendment is required by the…
Read MoreCan I amend claims after a final rejection in a patent application?
Amending claims after a final rejection is not an absolute right. The MPEP states: “It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116) or reinstate previously canceled claims.” However, amendments may be entered if…
Read More