What is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC)?

A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is a document issued by the patent examiner at the conclusion of an inter partes reexamination proceeding. It is prepared using Form PTOL-2068 and indicates the examiner’s intention to issue a reexamination certificate. According to the MPEP, Upon conclusion of the inter partes reexamination…

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What is an interference in patent law?

An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings. According to MPEP 2304, “The suggestion for an interference may come from an applicant…

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What is an Ex Parte Reexamination Certificate?

An Ex Parte Reexamination Certificate is a document issued at the conclusion of an ex parte reexamination proceeding, except in specific cases of merger with reissue applications or inter partes reexamination proceedings. The MPEP states: An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has…

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What does “prolix” mean in patent claims?

In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is…

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How does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?

The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect: “The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.” To satisfy the “way” prong, the examiner…

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Why are viruses mentioned in both direct and indirect self-replication categories?

The MPEP 2403.01 mentions viruses in both direct and indirect self-replication categories to illustrate that these categories are not mutually exclusive. The MPEP states: “The list of representative examples of each type of replicating material includes viruses to demonstrate that the two lists in the rule are not intended to be mutually exclusive.” This inclusion…

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How does the USPTO determine if a patent application meets the written description requirement?

How does the USPTO determine if a patent application meets the written description requirement? The United States Patent and Trademark Office (USPTO) uses specific criteria to determine if a patent application meets the written description requirement under 35 U.S.C. 112(a). According to the MPEP 2163: “The written description requirement is satisfied if the disclosure conveys…

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