What is supplemental examination?
Supplemental examination is a process provided by 35 U.S.C. 257 that allows a patent owner to request the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent.” As stated in the MPEP: “35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or…
Read MoreCan a patent be reissued if fraud was committed in the original application?
No, a patent cannot be reissued if fraud was committed in the original application. The MPEP is clear on this point: It is clear that “fraud” cannot be purged through the reissue process. This statement is supported by case law, as the MPEP cites: Where such a condition [fraudulent or deceptive intention] is shown to…
Read MoreWhat is the purpose of 37 CFR 1.501(a)?
37 CFR 1.501(a) serves two main purposes: It allows any person to file a written submission of prior art during the enforceability period of a patent. It permits the submission of statements made by the patent owner in federal court or USPTO proceedings regarding claim scope. As stated in the MPEP: 37 CFR 1.501(a) permits…
Read MoreHow do intervening rights affect patent enforcement after inter partes reexamination?
Intervening rights can significantly affect patent enforcement after inter partes reexamination. When these rights apply, they limit the patent owner’s ability to enforce the amended or new claims against certain parties. The MPEP 2693 indicates that the effects are the same as those for reissued patents under 35 U.S.C. 252: “The rights detailed in 35…
Read MoreHow does inequitable conduct in one patent affect related patents or applications?
Inequitable conduct in one patent can have far-reaching consequences for related patents or applications. The MPEP provides insight into this issue: Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of…
Read MoreWhat is the impact of intervening rights on patent enforcement?
Intervening rights can significantly impact patent enforcement after a patent has been reinstated. According to MPEP § 2591, the patent holder’s ability to enforce their rights may be limited against certain parties who acted during the lapse period. The MPEP states: “No patent, the term of which has been maintained as a result of the…
Read MoreWhen is a foreign patent considered available as a reference?
Generally, a foreign patent is considered available as a reference on the date it becomes enforceable. This is typically the date when the sovereign formally bestows patent rights to the applicant. As stated in the MPEP: “The date the patent is available as a reference is generally the date that the patent becomes enforceable. This…
Read MoreWhat are the implications of deliberately suppressing material information in patent proceedings?
Deliberately suppressing material information in patent proceedings can have severe consequences, including the refusal to enforce patents. The MPEP 2015 cites Supreme Court precedents: “The U.S. Supreme Court has refused to enforce patents where deliberate steps were taken to suppress material information. See, e.g., Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 19…
Read MoreWhat are the consequences of having prolix claims in a patent application?
Having prolix claims in a patent application can lead to several negative consequences: Rejection by the USPTO: As stated in MPEP 2173.05(m), examiners can reject claims that are excessively wordy or contain unnecessary details that make the scope of the invention indefinite. Indefiniteness Issues: Prolix claims may violate the definiteness requirement under 35 U.S.C. 112(b),…
Read MoreWhat are the consequences of not maintaining a valid biological deposit?
Failing to maintain a valid biological deposit can have serious consequences for a patent application or issued patent. According to MPEP 2407.03: “37 CFR 1.805(d) sets forth the Office position that the failure to make a replacement deposit in a case pending before the Office, for example a reissue or reexamination proceeding, where a deposit…
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