How does the USPTO handle utility rejections for inventions with “throwaway” utilities?
The USPTO addresses “throwaway” utilities in patent applications as part of its examination process. According to MPEP 2107.01: “Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could…
Read MoreWhat happens to Sequence Listing XML files that exceed the 600KB limit?
While MPEP 2419.01 does not explicitly state what happens to Sequence Listing XML files that exceed the 600KB limit when transformed into ASCII text, it implies that these larger files are treated differently: “Upon transformation of the .xml file using the style sheet to an ASCII text file, any ASCII text file produced by the…
Read MoreHow does the USPTO handle applications not under secrecy orders that interfere with applications under secrecy orders?
The USPTO has a specific procedure for handling applications not under secrecy orders that interfere with applications under secrecy orders. According to MPEP 2306: “If an application not under a secrecy order has allowable claims that interfere with allowable claims of an application that is under a secrecy order, then the application that is not…
Read MoreHow does the USPTO determine if a Sequence Listing XML is “non-lengthy”?
The USPTO determines if a Sequence Listing XML is “non-lengthy” based on the size of the ASCII text file produced after transforming the XML file. According to MPEP 2419.01: “Upon transformation of the .xml file using the style sheet to an ASCII text file, any ASCII text file produced by the USPTO that is under…
Read MoreHow do “Use” claims relate to process claims in patent applications?
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process. The MPEP states: “Attempts to claim a process without setting forth any steps involved…
Read MoreWhat types of documents are considered “U.S. patent documents” under the AIA 35 U.S.C. 102(b)(2)(A) exception?
According to the MPEP, “U.S. patent documents” under the AIA 35 U.S.C. 102(b)(2)(A) exception include: U.S. patents U.S. patent application publications WIPO published applications The MPEP specifically states: This exception limits the use of an inventor’s own work as prior art, when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application…
Read MoreHow should unbranched nucleotide sequences be presented in patent applications?
How should unbranched nucleotide sequences be presented in patent applications? According to MPEP 2421.02, unbranched nucleotide sequences in patent applications must be presented as follows: They must be listed using a single letter code for nucleotide bases. Sequences with 10 or more nucleotides must be represented in the sequence listing. Each sequence must be assigned…
Read MoreWhat types of patent proceedings can the Board assume jurisdiction over?
The Board of Patent Appeals and Interferences (BPAI) has broad authority to assume jurisdiction over various types of patent proceedings. According to MPEP 2312, the Board can take control of: Regular patent applications Reexamination proceedings Reissue applications Issued patents with derivation petitions The MPEP specifically states: “The Board may assume jurisdiction of any application, including…
Read MoreCan an applicant suggest an interference for an application under a secrecy order?
Yes, an applicant can suggest an interference for an application under a secrecy order, but the USPTO will not act on it immediately. According to MPEP 2306: “An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the…
Read MoreHow should the Sequence Listing XML be submitted in a patent application?
MPEP 2415 states that the Sequence Listing XML should be submitted “as a separate part of the specification.” This means it should be a distinct section within the patent application, separate from other parts of the disclosure. The Sequence Listing XML must conform to the requirements set forth in 37 CFR 1.831(a), which defines the…
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