How does the USPTO consider objective evidence of nonobviousness?
The USPTO is required to consider objective evidence of nonobviousness when timely presented. According to MPEP 716.01(a): “Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness…
Read MoreHow does the USPTO handle common ownership statements filed after rejection?
How does the USPTO handle common ownership statements filed after rejection? The USPTO allows applicants to file common ownership statements even after a rejection has been made. According to MPEP 717.02(c): “If the applicant files the statement of common ownership to invoke a joint research agreement or common ownership exception after a rejection has been…
Read MoreHow does the USPTO balance prima facie obviousness and secondary considerations?
The USPTO balances prima facie obviousness and secondary considerations by following the guidance in MPEP 716.01(d). The key aspects of this balancing act are: Prima facie obviousness and secondary considerations are both part of the overall obviousness analysis. Examiners must consider all evidence before making a final determination. The strength of the prima facie case…
Read MoreWhat is the scope of the USPTO’s authority to require information under 37 CFR 1.105?
The United States Patent and Trademark Office (USPTO) has broad authority to require information under 37 CFR 1.105. The MPEP cites a court case that clarifies this authority: “See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)(“Beyond that which a patent applicant is duty-bound to disclose pursuant to 37…
Read MoreWhat constitutes ‘unexpected results’ in patent law?
‘Unexpected results’ in patent law refer to properties or outcomes of an invention that are surprising or unanticipated based on the prior art. The MPEP states: Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such…
Read MoreHow does the presence of an unexpected property affect patent nonobviousness?
The presence of an unexpected property can be strong evidence of nonobviousness in patent applications. According to MPEP 716.02(a): Presence of a property not possessed by the prior art is evidence of nonobviousness. This principle is illustrated by several cases cited in the MPEP: In re Papesch: Claims to a compound structurally similar to a…
Read MoreWhat should examiners do when they identify unclaimed patentable subject matter in a patent application?
When patent examiners identify patentable subject matter that hasn’t been claimed in an application, they should take proactive steps to inform the applicant. The MPEP 707.07(j) provides guidance: If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to…
Read MoreWhat types of information can an examiner request about prior art?
What types of information can an examiner request about prior art? An examiner can request various types of information about prior art, including: Copies of patents, publications, or other information about prior art cited in the application but not submitted in compliant form Names of persons involved in developing the subject matter of the claims…
Read MoreWhat types of materials can be submitted under MPEP § 724.02?
MPEP § 724.02 allows for the submission of trade secret, proprietary, and/or protective order materials that are considered ‘material to patentability’. Specifically, the MPEP states: The types of materials or information contemplated for submission under MPEP § 724.02 include information ‘material to patentability’ but does not include information favorable to patentability. This means that any…
Read MoreWhat types of information can be requested in a requirement for information?
A requirement for information under 37 CFR 1.105 can request various types of information, including: Citations and copies of individual art references Identification of whole collections of art Answers to specific questions Factual information known to the applicant Information about the existence of specific documents Stipulations of facts The MPEP provides specific form paragraphs for…
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