What is the impact of the CREATE Act on double patenting rejections?
The CREATE Act has a significant impact on double patenting rejections in patent examination. The MPEP explains: “Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003).“ As…
Read MoreHow does the interpretation of contingent limitations differ between method and system claims?
The interpretation of contingent limitations differs significantly between method and system claims. According to MPEP 2111.04, based on the Ex parte Schulhauser decision: For method claims: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to…
Read MoreWhat should be included in the examiner’s first action in a reexamination proceeding?
The examiner’s first action in a reexamination proceeding should include several key elements: A clear establishment of the issues between the examiner and the patent owner regarding the patent. A cautionary statement to the patent owner about the need for a complete response. A warning that the next action is expected to be a final…
Read MoreWhat should be included in an Action Closing Prosecution (ACP)?
An Action Closing Prosecution (ACP) in an inter partes reexamination should include several key elements. According to MPEP 2671.02, the content of an ACP should: Address all issues related to patents or printed publications Clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt Provide reasons why rejected…
Read MoreHow should prior art be considered in patent examination?
Prior art must be considered in its entirety during patent examination, including portions that may teach away from the claimed invention. The MPEP 2141.02 states: “A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” This means that examiners should not…
Read MoreWhat happens if an applicant doesn’t traverse or inadequately traverses an official notice?
If an applicant either fails to traverse an examiner’s assertion of official notice or provides an inadequate traversal, the examiner should clearly indicate this in the next Office action. According to MPEP 2144.03: “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate…
Read MoreWhat happens if an applicant doesn’t challenge the examiner’s use of official notice?
What happens if an applicant doesn’t challenge the examiner’s use of official notice? If an applicant does not challenge or traverse the examiner’s use of official notice, there are important consequences. According to MPEP 2144.03(C): “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should…
Read MoreWhat happens if an applicant refuses to add a required claim for interference?
If an applicant refuses to add a claim required under 37 CFR 41.202(c), there are significant consequences. According to MPEP 2304.04(b): “Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim.” This means that the applicant would be barred from claiming not only the…
Read MoreWhat happens if a viability test indicates that a biological deposit is not viable?
If a viability test indicates that a biological deposit is not viable, the patent examination process is affected. According to MPEP 2409 and 37 CFR 1.807(c): “If a viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received…
Read MoreWhat are the consequences of not providing a certified translation for a foreign benefit application?
Failing to provide a certified translation for a foreign benefit application can have significant consequences. According to MPEP 2304.01(c): “Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file.” This means that without a certified translation, the applicant may not…
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