How is long-felt need measured in patent examination?
In patent examination, long-felt need is measured from a specific point in time, as outlined in the MPEP: Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references. This…
Read MoreWhat is the maximum extension period for a shortened statutory period under 35 U.S.C. 133?
The maximum extension period for a shortened statutory period under 35 U.S.C. 133 is limited to 6 months from the date of the Office action. The MPEP clearly states: Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory…
Read MoreWhat is considered ‘material to patentability’ according to the USPTO?
Information is considered ‘material to patentability’ when it meets specific criteria outlined in MPEP 724 and 37 CFR 1.56(b). The USPTO defines it as follows: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or…
Read MoreCan long-felt need be established if the problem was only recently discovered?
Can long-felt need be established if the problem was only recently discovered? Establishing long-felt need for a recently discovered problem can be challenging. According to the USPTO guidelines: Long-standing nature: Long-felt need typically requires that the problem has existed and been recognized for a significant period. Recent discovery exception: In some cases, a recently discovered…
Read MoreHow does the concept of long-felt need impact the assessment of non-obviousness in patent examination?
The concept of long-felt need plays a significant role in assessing non-obviousness during patent examination. According to MPEP 716.04, long-felt need can provide strong evidence against obviousness. Here’s how it impacts the assessment: Indicates non-obvious solution: A long-felt need suggests that the solution was not obvious to those skilled in the art. If the solution…
Read MoreWhat are the limitations on interviews prior to first Office action in patent applications?
While interviews prior to the first Office action can be beneficial, there are certain limitations and considerations: Interviews solely to ‘sound out’ the examiner are not permitted The examiner may require the applicant to provide a written statement of the substance of the interview Complex technical subject matter may require a formal Office action before…
Read MoreHow does licensing evidence factor into commercial success arguments?
Licensing evidence can be used to support arguments of commercial success, but it must be carefully evaluated. The Manual of Patent Examining Procedure (MPEP) 716.03(b) provides guidance on this matter: “Evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated…
Read MoreWhat is the legal basis for the USPTO’s authority to require information?
The USPTO’s authority to require information during patent examination is rooted in statutory law. According to MPEP 704.10: The authority for the Office to make such requirements arises from the statutory requirements of examination pursuant to 35 U.S.C. 131 and 132. Specifically: 35 U.S.C. 131 requires the USPTO to examine applications and issue patents when…
Read MoreCan large demonstrations or exhibits be viewed outside the USPTO office?
Yes, large demonstrations or exhibits that cannot be brought into the USPTO office can be viewed by the examiner outside of the Office. The MPEP states: Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with…
Read MoreWhat language should be used when rejecting claims in a patent application?
According to MPEP 707.07(d), when rejecting claims in a patent application, examiners should: Use the word ‘reject’ and fully and clearly state the ground of rejection. Designate the statutory basis for any ground of rejection by express reference to a section of 35 U.S.C. in the opening sentence of each ground of rejection. Clearly articulate…
Read More