How can I determine if a trademark or trade name in a patent claim is indefinite?
To determine if a trademark or trade name in a patent claim is indefinite, consider the following factors: Whether the trademark or trade name is used to identify or describe a particular material or product. If it’s used as a limitation to identify or describe a particular material or product, it may render the claim…
Read MoreWhat is considered when determining if a substantial new question of patentability exists?
The determination of whether a substantial new question of patentability exists is based on the patent claims in effect at the time of the determination. The MPEP states: “The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised.”…
Read MoreWhat is required in a detailed explanation for a supplemental examination request?
A detailed explanation for a supplemental examination request must include: An explanation of how each item of information may be applied to the claims for which supplemental examination is requested. For each claim, either what the item of information teaches or which teachings may be important for determining patentability. Citations to specific portions or figures…
Read MoreHow does a judgment in a derivation proceeding affect patent claims?
A judgment in a derivation proceeding can have significant effects on patent claims. According to MPEP 2315: “Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim.” This means that if a claim is judged against in a derivation proceeding, it…
Read MoreWhat is the process for handling dependent claims in an inter partes reexamination certificate?
What is the process for handling dependent claims in an inter partes reexamination certificate? The handling of dependent claims in an inter partes reexamination certificate follows specific rules to ensure clarity and proper referencing. According to MPEP 2688: “If a base claim is canceled, each claim which depends from that base claim must be re-written…
Read MoreWhat information is required to demonstrate that a patent claims the approved product?
To demonstrate that a patent claims the approved product in a patent term extension application, 37 CFR 1.740(a)(9) requires the following: “The application need only explain how one product claim of the patent claims the approved product, if there is a claim to the product. In addition, the application need only explain how one method…
Read MoreHow do “critical feature” omissions affect enablement in patent claims?
How do “critical feature” omissions affect enablement in patent claims? Omitting critical features in patent claims can significantly impact enablement. The MPEP 2164.08(c) states: “A feature which is taught as critical in a specification and is not recited in the claims should result in a rejection of such claim under the enablement provision section of…
Read MoreWhat is the criteria for making a determination in a supplemental examination request?
The criteria for making a determination on a supplemental examination request is whether any of the items of information submitted raise a substantial new question of patentability (SNQ) affecting at least one claim of the patent. This is stated in 35 U.S.C. 257(a). The MPEP states: The SNQ standard in supplemental examination proceedings is identical…
Read MoreWhat are the criteria for determining whether functional language in a claim is definite?
The criteria for determining whether functional language in a claim is definite include: Whether the claim scope is clear to a person of ordinary skill in the art Whether the specification provides a reasonable degree of clarity and particularity to inform skilled artisans of the claim scope Whether the claim language provides a clear-cut indication…
Read MoreHow do courts view negative limitations in patent claims?
Courts generally view negative limitations in patent claims as acceptable, provided they meet certain criteria. The MPEP 2173.05(i) states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.” This represents a shift from older views where courts were sometimes critical of negative limitations. The MPEP…
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