How does the USPTO handle claims that cover both statutory and non-statutory embodiments?
The USPTO has specific guidelines for handling claims that cover both statutory and non-statutory embodiments. According to the MPEP: “A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1:…
Read MoreHow does the USPTO handle protests in patent applications?
The USPTO has specific procedures for handling protests in patent applications. According to MPEP 1901: Where the protest specifically identifies the application, and is otherwise compliant, the protest will be considered by the Office if it is matched with the application in time to permit review by the examiner during prosecution. However, if there’s insufficient…
Read MoreHow does the USPTO handle prior art references with predicted properties or prophetic examples?
The USPTO treats prior art references with predicted properties or prophetic examples as potentially valid prior art. According to MPEP 2121.04: “A reference that contains a detailed description of a specific embodiment, even if the embodiment has not been prepared or tested, may be sufficient to anticipate or render obvious a claimed invention.” This means…
Read MoreHow does the USPTO handle prior art references from non-analogous arts in patent examinations?
The USPTO considers prior art references from non-analogous arts in patent examinations, particularly for obviousness rejections. According to MPEP 2141.01(a): “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference…
Read MoreHow are merged reexamination proceedings handled by the USPTO?
When reexamination proceedings are merged, the USPTO follows specific guidelines to ensure efficient handling: A single combined examiner’s action is prepared for all merged proceedings. Each action contains the control numbers of all involved proceedings on every page. A single action cover mailing sheet is used for all parties involved. The patent owner is required…
Read MoreHow does the USPTO handle duty of disclosure and inequitable conduct issues?
The United States Patent and Trademark Office (USPTO) generally does not handle duty of disclosure or inequitable conduct issues during the examination process. According to MPEP 2010, “It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where…
Read MoreWhat forms are used by the USPTO in inter partes reexamination actions?
The USPTO uses several specific forms for inter partes reexamination actions and processing. According to MPEP 2696, these forms include: PTOL-2064: Office Action in Inter Partes Reexamination PTOL-2065: Action Closing Prosecution (37 CFR 1.949) PTOL-2066: Right of Appeal Notice (37 CFR 1.953) PTOL-2068: Notice of Intent to Issue Inter Partes Reexamination Certificate PTOL-2069: Notice of…
Read MoreWhat forms are used in ex parte reexamination proceedings?
The USPTO uses several specific forms for ex parte reexamination actions and processing. Some key forms include: PTOL-471D: Order Denying Request For Ex Parte Reexamination PTOL-471G: Order Granting Request For Ex Parte Reexamination PTOL-466: Office Action in Ex Parte Reexamination PTOL-469: Notice of Intent to Issue Ex Parte Reexamination Certificate As stated in MPEP 2296,…
Read MoreHow does the USPTO define the “field of endeavor” in patent examination?
The USPTO takes a broad approach to defining the “field of endeavor” in patent examination. According to MPEP 2141.01(a): “The determination of what is analogous prior art is fact specific and may vary from case to case. In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor,…
Read MoreHow does the USPTO examine means-plus-function claims?
The USPTO examines means-plus-function claims using a two-step analysis, as explained in MPEP 2182: Define the function: The examiner must first identify the specific function claimed in the limitation. As stated in the MPEP, “The court must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only…
Read More