How does the information required under 37 CFR 1.105 differ from that required under 37 CFR 1.56?
The information required under 37 CFR 1.105 differs from that required under 37 CFR 1.56 in terms of its scope and purpose. The MPEP explains: “Unlike 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information that may not be material to patentability in itself, but that is necessary to obtain a…
Read MoreHow can I determine if a cited reference in an IDS has been considered by the examiner?
To determine if a cited reference in an Information Disclosure Statement (IDS) has been considered by the examiner, you should refer to MPEP 609.04(b). The MPEP 609.08 directs applicants to this section: See MPEP ยง 609.04(b) for determining whether a cited reference has been considered by the examiner. This section provides detailed guidance on how…
Read MoreHow can an applicant demonstrate unexpected results for a broad claim range?
To demonstrate unexpected results for a broad claim range, an applicant should provide evidence that covers the entire claimed range. However, in some cases, testing a narrower range may be sufficient. According to MPEP 716.02(d): The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower…
Read MoreCan I demonstrate my invention during a patent interview?
Yes, you can demonstrate your invention during a patent interview. The MPEP states, The invention in question may be exhibited or demonstrated during the interview by a model or exhibit thereof. (MPEP 713.08) This allows inventors to provide a visual representation of their invention to the examiner. However, it’s important to note that demonstrations or…
Read MoreHow can an applicant demonstrate a nexus between commercial success and the claimed invention?
To demonstrate a nexus between commercial success and the claimed invention, an applicant must provide evidence that the commercial success is directly attributable to the claimed features of the invention. According to MPEP 716.03(b): “Merely showing that there was commercial success of an article which embodied the invention is not sufficient.” Instead, applicants should: Provide…
Read MoreHow are Defensive Publications cited as prior art?
Defensive Publications are cited as prior art under specific conditions: They are considered printed publications and cited under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or 102(b). They become effective as prior art from the date of publication in the Official Gazette. They can be used alone or in combination with other prior art…
Read MoreWhat is the difference between a Defensive Publication and a patent application publication?
A Defensive Publication is distinct from a patent application publication in several ways: It is not a patent or an application publication under 35 U.S.C. 122(b). It is considered a publication for prior art purposes. It becomes prior art only as of its publication date. The applicant waives rights to an enforceable patent when opting…
Read MoreWhat are the criteria for making a requirement for information under 37 CFR 1.105?
The MPEP outlines specific criteria for making a requirement for information under 37 CFR 1.105: Reasonable Necessity: The information must be reasonably necessary for the examination or treatment of a matter in the application. Factual Information: The requirement should seek facts and factual information known to the applicant or readily obtained after reasonable inquiry. Minimized…
Read MoreWhat are the criteria for making a rejection final in patent examination?
What are the criteria for making a rejection final in patent examination? An examiner can make a rejection final under specific circumstances. According to MPEP 706.07(a): ‘Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by…
Read MoreWhat are the key criteria for evaluating a declaration under 37 CFR 1.130(a)?
The MPEP outlines several criteria for evaluating the effectiveness of a declaration under 37 CFR 1.130(a): Whether the disclosure is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A) Whether the affidavit or declaration shows sufficient facts to establish the inventor’s contribution Whether the formal requirements of the declaration or affidavit are met Whether…
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