When should the markedly different characteristics analysis be performed?

The markedly different characteristics analysis should be performed when evaluating nature-based product limitations in a claim. However, it’s important to note that not all claims containing nature-based products require this analysis. According to the MPEP, “Examiners should keep in mind that if the nature-based product limitation is naturally occurring, there is no need to perform…

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What is a reexamination certificate?

A reexamination certificate is a document issued by the USPTO after the completion of a patent reexamination process. It confirms the patentability of the original patent claims, cancels any unpatentable claims, or incorporates allowed amended or new claims. The distribution of this certificate is crucial, as outlined in MPEP 2292: “An e-copy of the reexamination…

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What is an omnibus claim in patent law?

An omnibus claim is a type of patent claim that typically reads as follows: “A device substantially as shown and described.” This type of claim is generally considered problematic in patent law. According to MPEP 2173.05(r), “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is…

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What is a means-plus-function claim limitation?

A means-plus-function claim limitation is a claim element that uses the term “means” (or “step”) and is coupled with functional language, without reciting specific structure to perform the function. These limitations are interpreted under 35 U.S.C. 112(f). As stated in the MPEP: “An element in a claim for a combination may be expressed as a…

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What is a Markush group in patent claims?

A Markush group is a claim construction that lists alternatives to define a limitation in a patent claim. As stated in the MPEP 2173.05(h): “Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims, after the appellant in Ex parte Markush, 1925…

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What is the time frame for the USPTO to determine if a Substantial New Question (SNQ) of patentability is raised in a supplemental examination request?

According to MPEP 2816, the USPTO is required to make a determination within three months following the filing date of a request for supplemental examination. Specifically, the MPEP states: “35 U.S.C. 257(a) and 37 CFR 1.620(b) require that, within three months following the filing date of a request for supplemental examination, the Office will determine…

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