How does the USPTO evaluate sales figures as evidence of commercial success?
The United States Patent and Trademark Office (USPTO) evaluates sales figures carefully when considering evidence of commercial success. According to MPEP 716.03(b): “Gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985), or as to…
Read MoreHow should rebuttal evidence be evaluated in patent examination?
Rebuttal evidence in patent examination should be evaluated holistically against the prima facie case, not in isolation. According to MPEP 716.01(d): “All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case.” This means that examiners should consider the entire body of rebuttal evidence together,…
Read MoreHow is opinion evidence evaluated in patent examination?
Opinion evidence in patent examination is evaluated based on several factors: The nature of the matter sought to be established The strength of any opposing evidence The interest of the expert in the outcome of the case The presence or absence of factual support for the expert’s opinion The MPEP states: “Although factual evidence is…
Read MoreWhat is the burden of proof for enablement in patent applications?
In patent examination, the burden of proof for enablement initially falls on the examiner. As stated in MPEP 716.09: Once the examiner has established a prima facie case of lack of enablement, the burden falls on the applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would…
Read MoreHow does filing a reply within 2 months affect the reply period?
Filing a complete first reply within 2 months of the final Office action can affect the reply period in several ways: If the reply places the application in condition for allowance, it will be processed as an allowance with no extension fees due. If the reply nearly places the application in condition for allowance, except…
Read MoreWhat is the significance of the effective filing date in patent examination?
The effective filing date is crucial in patent examination as it determines which prior art can be used against the claims. MPEP 715.01(d) states: ‘The 1-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from the filing date to which the application is entitled (United States filing date or foreign priority date) with respect…
Read MoreWhat is the E-Patent Reference program and how does it affect citation practices?
The E-Patent Reference program is an initiative by the USPTO to provide electronic access to cited U.S. patent references in Office Actions. As noted in MPEP 707.05(g): The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. This program has significantly…
Read MoreWhat is the significance of ‘different inventive entity’ in MPEP 715.01(a)?
The concept of ‘different inventive entity’ is crucial in MPEP 715.01(a). It refers to situations where a reference (such as a patent or published application) names inventors that are not identical to those in the application being examined. The MPEP states: ‘Where the reference is a U.S. patent or application publication of a pending or…
Read MoreCan the grounds for rejecting claims in an application be different from those applicable to the corresponding patent claims?
Yes, the grounds for rejecting claims in an application can be different from those applicable to the corresponding patent claims. According to MPEP 706.06: “The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent.” This means…
Read MoreWhat is the difference between Form Paragraph 7.91 and Form Paragraph 7.95?
Form Paragraphs 7.91 and 7.95 are used in different scenarios during patent examination, as indicated in MPEP 711.02(a): Form Paragraph 7.91 is used when the reply is not fully responsive to the Office action and there appears to be no bona fide attempt to respond. Form Paragraph 7.95 is used when the reply appears to…
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