What is the purpose of conducting a thorough search during patent examination?
The purpose of conducting a thorough search during patent examination is to enable a speedy and just determination of the issues involved. According to MPEP 904.03, It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a thorough and complete search, commensurate with the…
Read MoreWhat is the purpose of restriction in reissue applications?
Restriction in reissue applications serves to separate newly added claims from the original patent claims when they are directed to distinct inventions. According to MPEP 1450, “37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims, where the added…
Read MoreWhat is a proper Markush grouping?
A proper Markush grouping, as defined in MPEP 803.02, must meet two criteria: The members of the Markush group share a “single structural similarity” The members share a common use The MPEP cites the Supplementary Guidelines, which state: “Where a Markush grouping describes part of a combination or process, the members following ‘selected from the…
Read MoreDo claims in a reissue application have a presumption of validity?
No, claims in a reissue application do not have a presumption of validity. The MPEP 1445 explicitly states: “Claims in a reissue application enjoy no ‘presumption of validity.’” This principle is supported by case law, including: In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973) In re Sneed, 710 F.2d 1544,…
Read MoreHow is a presumption of nexus established in patent cases?
A presumption of nexus is established when the asserted objective evidence is tied to a product that includes the claimed features and is coextensive with them. According to the MPEP, Nexus is presumed when the asserted objective evidence of record is tied to a certain product and that product includes the claimed features, and is…
Read MoreWhat are “overlooked aspects” in the context of reissue applications?
“Overlooked aspects” in reissue applications refer to claims drawn to separate inventions, embodiments, or species that were disclosed but never covered by the claims in the original application prosecution. As explained in MPEP 1412.01: “Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was…
Read MoreHow does the “overlooked aspects” doctrine apply to broadening reissue claims?
The “overlooked aspects” doctrine is an important consideration in broadening reissue claims. According to MPEP 1412.03: “Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects.” This doctrine allows patent owners to pursue claims in a reissue application that were disclosed in…
Read MoreWhat options do I have if my new claims are withdrawn due to election by original presentation?
If your new claims are withdrawn due to election by original presentation, you have several options: Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal. File a divisional application: You can pursue the new claims in a separate divisional application.…
Read MoreWhat is the process for designating claims for printing in the Official Gazette for reissue patents?
The process for designating claims for printing in the Official Gazette for reissue patents involves specific guidelines: At least one claim must be designated for printing If claims have been amended or added, the designated claim must include a change or addition Canceled claims cannot be designated for printing If there are no changes to…
Read MoreWhat are mutually exclusive species in patent applications?
Mutually exclusive species in patent applications refer to different embodiments of an invention that have distinct characteristics or limitations. According to MPEP 806.04(f): “Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second…
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