How does the USPTO determine if subject matter is interfering?
The USPTO determines if subject matter is interfering by examining the claims of different applications or patents. According to MPEP 2301.03: An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice…
Read MoreIs it acceptable to use ‘optionally’ in patent claims?
Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this: “In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as…
Read MoreCan new terms be used in patent claims?
Yes, new terms can be used in patent claims. In fact, the MPEP recognizes that it’s often desirable to use new terms to describe and define new inventions more precisely. As stated in MPEP 2173.05(a): “Courts have recognized that it is not only permissible, but often desirable, to use new terms that are frequently more…
Read MoreWhat is undue multiplicity in patent claims?
Undue multiplicity in patent claims refers to an unreasonable number of repetitious and multiplied claims that confuse rather than clarify the invention. As stated in MPEP 2173.05(n): “Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which…
Read MoreWhat is the significance of “undue experimentation” in patent enablement?
“Undue experimentation” is a critical concept in patent enablement. It refers to the level of experimentation required for a person skilled in the art to make and use the full scope of the claimed invention. The MPEP states: “The Federal Circuit has repeatedly held that ‘the specification must teach those skilled in the art how…
Read MoreWhat role does undue experimentation play in determining enablement for claims with inoperative embodiments?
Undue experimentation plays a crucial role in determining enablement for claims with inoperative embodiments. According to MPEP 2164.08(b): “[T]he scope of the claim may still not be enabled where undue experimentation is involved in determining those embodiments that are operable.” The key consideration is whether a skilled person can identify operative embodiments without expending more…
Read MoreHow does the MPEP distinguish between different types of reexamination requests?
The MPEP distinguishes between different types of reexamination requests based on the requester’s intent and the claims made. Two main types are discussed: Requests indicating claims are unpatentable over the art: “The example in MPEP § 2247.01 is drafted for the case where the ‘request indicates that Requester considers that Claims 1-2 are unpatentable over…
Read MoreWhat triggers an order for inter partes reexamination?
An order for inter partes reexamination is triggered when the Director finds that a substantial new question of patentability (SNQ) affecting a claim of a patent is raised, or that there is a reasonable likelihood that the requester would prevail (RLP) with respect to at least one of the claims challenged in the request. As…
Read MoreWhat is the significance of transitional phrases in patent claims?
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from…
Read MoreHow does “transformation” relate to particular treatment in patent claims?
The concept of “transformation” is closely related to particular treatment in patent claims, as discussed in MPEP 2106.04(d)(2). The MPEP states: “[A] treatment or prophylaxis limitation encompasses more than just the step of ‘administering’ a medication or therapy. For example, ‘administering a medication’ to a patient may also include the steps of determining the appropriate…
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