What are the requirements for a written description rejection by a patent examiner?
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must: Identify the claim limitation(s) at issue Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of…
Read MoreHow are withdrawn rejections handled in inter partes reexamination?
The handling of withdrawn rejections in inter partes reexamination depends on the specific circumstances. According to MPEP 2671.01: When an examiner withdraws a rejection they originally initiated: The withdrawal should be clearly stated as a decision favorable to patentability. The third party requester may propose the withdrawn rejection in their next set of comments. When…
Read MoreWhat are the requirements for a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2)?
For a WIPO published application to be considered prior art under AIA 35 U.S.C. 102(a)(2), it must meet specific requirements. According to MPEP 2154.01(a): “AIA 35 U.S.C. 102(a)(2) sets forth three descriptions of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject…
Read MoreWhy doesn’t the USPTO investigate duty of disclosure issues during patent examination?
The USPTO does not investigate duty of disclosure issues during patent examination for several reasons: Lack of appropriate tools: The USPTO lacks the necessary tools to effectively deal with these complex issues. Sensitive nature: Duty of disclosure and inequitable conduct are sensitive matters with potential significant impact on a patent. Judicial doctrine: Inequitable conduct is…
Read MoreWhat is the purpose of requiring an applicant to add a claim under 37 CFR 41.202(c)?
The purpose of requiring an applicant to add a claim under 37 CFR 41.202(c) is to provoke an interference proceeding. According to MPEP 2304.04(b), this requirement may be made “to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter.” The MPEP…
Read MoreWho conducts reexamination reviews at the USPTO?
Reexamination reviews at the USPTO are conducted by several entities: Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) Technology Center (TC) Quality Assurance Specialist (QAS) Paralegals Other assigned technical support staff As stated in MPEP § 2289: “All reexamination cases are monitored and reviewed in the Central Reexamination Unit (CRU) or Technology Center (TC)…
Read MoreWho can file a protest against a patent application?
According to MPEP 1901.01, any member of the public can file a protest under 37 CFR 1.291. This includes: Private persons Corporate entities Government agencies The MPEP states: Any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291. This broad definition ensures that anyone…
Read MoreWho can file a request for ex parte reexamination?
According to MPEP 2212, “any person” may file a request for ex parte reexamination of a patent, as stated in 35 U.S.C. 302 and 37 CFR 1.510(a). The MPEP specifically notes that: “Corporations and/or governmental entities are included within the scope of the term ‘any person.’“ This broad definition includes patentees, licensees, potential licensees, attorneys,…
Read MoreWho assigns reexamination requests in the USPTO?
Reexamination requests are typically assigned by the Supervisory Patent Reexamination Specialist (SPRS) in the Central Reexamination Unit (CRU). As stated in the MPEP, Except for reexamination requests for design patents, reexamination requests are assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to…
Read MoreWhen can a patent examiner use the streamlined eligibility analysis?
When can a patent examiner use the streamlined eligibility analysis? A patent examiner can use the streamlined eligibility analysis when a claim, viewed as a whole, clearly does not attempt to tie up a judicial exception. The MPEP 2106.06 states: “This analysis can be used for claims that may or may not recite a judicial…
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