What are the circumstances for discretionary reopening of prosecution after ACP?
Examiners are encouraged to be liberal in reopening prosecution after Action Closing Prosecution (ACP) when the equities of the situation make it appropriate. This is because patent owners cannot continue the proceeding through other means such as refiling or requesting continued examination. MPEP 2673.01 provides an example: “Patent owner might submit an amendment after the…
Read MoreHow should ongoing litigation be disclosed during the patent examination process?
For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information: Promptly bring the litigation to the attention of the USPTO. Provide enough information to clearly inform the Office of the nature of the issues in the litigation. Submit relevant litigation materials that are “material to…
Read MoreWhat information from copending U.S. patent applications needs to be disclosed?
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes: Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee Applications that disclose similar subject matter Prior art references…
Read MoreWhat are the key differences between pre-AIA 35 U.S.C. 102(a), (b), and (e)?
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02: 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant. 35 U.S.C. 102(b) relates to public use or sale in the…
Read MoreWhat is the difference between using a reference under MPEP 2124 and as prior art?
What is the difference between using a reference under MPEP 2124 and as prior art? The key difference lies in how the reference is used and what it can prove in the patent examination process: Prior Art References: Used to show anticipation or obviousness of the claimed invention. They must predate the filing date or…
Read MoreWhat is the difference between 35 U.S.C. 102(a)(1) and 102(a)(2)?
The main difference between 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the types of prior art they cover: 35 U.S.C. 102(a)(1) covers public disclosures, including patents, printed publications, public use, sales, or other public availability of the claimed invention before the effective filing date. 35 U.S.C. 102(a)(2) specifically covers U.S. patents, U.S. patent application publications,…
Read MoreWhat is the difference between admissions and mere arguments in patent examination?
In patent examination, there is a crucial distinction between admissions and mere arguments. MPEP 2129 provides guidance on this matter: “Mere arguments or statements that a reference is not prior art are not admissions that it is prior art.” This distinction is important because: Admissions are statements that acknowledge certain information as prior art and…
Read MoreHow is the reasonable expectation of success determined in patent examination?
The reasonable expectation of success in patent examination is determined based on the knowledge available at the relevant time. For pre-AIA cases, this is at the time the invention was made. For AIA cases, it’s before the effective filing date of the claimed invention. According to MPEP 2143.02: “Whether an art is predictable or whether…
Read MoreHow is “public use” determined under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “public use” is determined by whether the use was available to the public. The MPEP states: “As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is limited to those uses that are available to the public.” This means that for a use to be considered “public,” it must be…
Read MoreHow does an examiner determine if a prior art element is an equivalent?
How does an examiner determine if a prior art element is an equivalent? To determine if a prior art element is an equivalent, an examiner follows a specific process outlined in the MPEP. The key steps are: Interpret the claim language reasonably Consider the specification and prior art teachings Evaluate interchangeability at the time of…
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