What is the scope of inter partes reexamination?
The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…
Read MoreWhat is the scope of an ex parte reexamination under 35 U.S.C. 304?
An ex parte reexamination under 35 U.S.C. 304 provides a complete reexamination of the patent claims based on prior art patents and printed publications. The MPEP states: “A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” Additionally, double…
Read MoreWhat is the “rule of reason” in patent claim multiplicity?
The “rule of reason” in patent claim multiplicity refers to the principle that examiners should use judgment and consider the specific circumstances of each case when evaluating whether claims are unduly multiplied. This concept is derived from case law, as cited in MPEP 2173.05(n): “As noted by the court in In re Chandler, 319 F.2d…
Read MoreHow can an applicant resolve ambiguities in functional limitations?
The MPEP provides several ways an applicant can resolve ambiguities in functional limitations during prosecution: Use a quantitative metric instead of a qualitative functional feature. For example, include a numeric limitation for a physical property. Demonstrate that the specification provides a formula for calculating a property, along with examples that meet and do not meet…
Read MoreHow does res judicata apply in patent law?
Res judicata in patent law prevents patent owners or applicants from seeking claims that are not patentably distinct from claims previously refused or canceled during administrative trials or federal court proceedings. According to MPEP 2190: “A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim…
Read MoreWhat is the requirement for copying claims from a patent?
When claims are copied or substantially copied from a patent, there is a specific requirement under patent law. According to MPEP 2001.06(d): “37 CFR 41.202(a) requires the applicant, at the time he or she presents the claim(s), to identify the patent and the numbers of the patent claims.” This means that when an applicant includes…
Read MoreWhat are the two requirements for claims under 35 U.S.C. 112(b)?
According to MPEP 2171, there are two separate requirements set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph: Subjective Requirement: The claims must set forth the subject matter that the inventor or a joint inventor regards as the invention. Objective Requirement: The claims must particularly point out and distinctly define the…
Read MoreWhat are the requirements for a negative limitation to be considered definite?
For a negative limitation to be considered definite, it must clearly set forth the boundaries of the patent protection sought. According to MPEP 2173.05(i), the key requirement is that the claim complies with 35 U.S.C. 112(b), which requires the claims to particularly point out and distinctly claim the subject matter of the invention. The MPEP…
Read MoreWhat are the requirements for establishing an actual reduction to practice?
To establish an actual reduction to practice, an inventor must meet a two-prong test as described in MPEP 2138.05: The inventor must have constructed an embodiment or performed a process that meets every element of the patent claim. The embodiment or process must have operated for its intended purpose. As stated in the MPEP: “In…
Read MoreWhat information must be included in a patent term extension application?
According to 35 U.S.C. 156(d)(1), a patent term extension application must contain the following information: The identity of the approved product and the Federal statute under which regulatory review occurred The identity of the patent for which an extension is being sought and the relevant claims Information to determine eligibility for extension and the rights…
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