What 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 MoreWho is responsible for reporting material fraud discovered during patent examination?
Who is responsible for reporting material fraud discovered during patent examination? According to MPEP 2819, any USPTO employee who becomes aware of a material fraud on the Office is responsible for reporting it. The MPEP states: “If an Office employee or program becomes aware of a material fraud… the employee or program should bring the…
Read MoreHow does MPEP 2122 address the relevance of utility in prior art references?
MPEP 2122 addresses the relevance of utility in prior art references by emphasizing that the utility of a disclosed invention is not a determining factor in its validity as prior art. The section states: “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives…
Read MoreHow does the MPEP address relative terms in patent claims?
The MPEP addresses relative terms in patent claims through specific form paragraphs, particularly form paragraph 7.34.03. This paragraph is used when a relative term or term of degree renders a claim indefinite. The form paragraph states: The term “[1]” in claim [2] is a relative term which renders the claim indefinite. The term “[1]” is…
Read MoreWhat are the disclosure requirements for reissue applications involved in litigation?
For reissue applications where the original patent has been involved in litigation, the MPEP 2001.06(c) outlines specific disclosure requirements: The existence of such litigation must be brought to the examiner’s attention at the time of filing or shortly after. This information can be disclosed in the reissue oath/declaration or in a separate paper, preferably accompanying…
Read MoreWhat regulations guide the examiner’s consideration of submissions in reexamination?
In reexamination proceedings, examiners are guided by specific regulations when considering various submissions. MPEP 2253 outlines these regulations: For proposed amendments: “With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j).“ For the patent owner’s…
Read MoreCan a reference with no stated utility still be used as prior art?
Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122: “In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.” This means that even if a prior art reference doesn’t explicitly mention the usefulness or…
Read MoreWhat is the process for preparing an Office action in a patent reexamination?
The process for preparing an Office action in a patent reexamination, as outlined in MPEP 2262, involves several steps: The examiner is notified upon receipt of a patent owner response or expiration of the response period. The examiner prepares for and sets up a panel review conference (see MPEP § 2271.01). The examiner may prepare…
Read MoreWhat happens if a reexamination certificate is about to issue during a new reexamination request?
If a reexamination certificate for a prior reexamination is about to issue when a new reexamination request is filed, the proceedings are typically not merged. According to MPEP 2295: “If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to…
Read MoreWhat are the search file implications of reexamination certificates?
Reexamination certificates have important implications for patent search files. The USPTO ensures that an electronic copy of the reexamination certificate is associated with the electronic copy of the patent in the search files. According to MPEP 2292: “An e-copy of the reexamination certificate will be associated with the e-copy of the patent in the search…
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