Can the sale of a product inherently possessing claimed characteristics trigger the on-sale bar?
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states: If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale,…
Read MoreWhat is the effect of a final court decision on an ex parte reexamination?
A final court decision can have a significant impact on an ex parte reexamination proceeding. According to MPEP 2286: “A final holding of claim invalidity or unenforceability (after all appeals), however, is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid…
Read MoreWhat are the consequences of failing to comply with the disclosure requirements of 35 U.S.C. 112(a)?
Failing to comply with the disclosure requirements of 35 U.S.C. 112(a) can have serious consequences for a patent application or an issued patent. According to the MPEP: “Failure to fully comply with the disclosure requirements could result in the denial of a patent, or in a holding of invalidity of an issued patent.“ The potential…
Read MoreWhat are the consequences of failing to disclose foreign prior art?
Failing to disclose material prior art from foreign applications can have serious consequences for a U.S. patent. The MPEP 2001.06(a) cites the case of Gemveto Jewelry Co. v. Lambert Bros., Inc. to illustrate this point: “A patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or…
Read MoreWhat are the consequences of failing to disclose the best mode?
Failing to disclose the best mode can have significant consequences, although these have been modified by recent legislative changes. According to MPEP 2165: Prior to the America Invents Act (AIA), failure to disclose the best mode could result in a patent being held invalid or unenforceable. Post-AIA, while the best mode requirement still exists, failure…
Read MoreWhat are the consequences of failing to meet one of the requirements under 35 U.S.C. 112(a)?
Failing to meet any of the three requirements under 35 U.S.C. 112(a) (written description, enablement, or best mode) can have serious consequences for a patent application or an issued patent. The potential consequences include: Rejection of the patent application: During examination, if the USPTO determines that the specification fails to meet any of these requirements,…
Read MoreCan failure to disclose the best mode be grounds for patent invalidity?
Yes, failure to disclose the best mode can be grounds for patent invalidity. However, it’s important to note that this only applies to patents issued from applications filed before September 16, 2011. As stated in MPEP 2165: “The failure to disclose the best mode is a basis for a defect under 35 U.S.C. 282 (b)(3)(A).…
Read MoreWhat are the consequences of failing to submit an Information Disclosure Statement (IDS)?
What are the consequences of failing to submit an Information Disclosure Statement (IDS)? Failing to submit an Information Disclosure Statement (IDS) can have serious consequences for patent applicants. According to MPEP 609: “The failure to timely file an Information Disclosure Statement may result in the application being abandoned or may adversely affect the validity of…
Read MoreWhat are the consequences of failing to meet the disclosure requirements when claiming benefit of an earlier application?
Failing to meet the disclosure requirements when claiming benefit of an earlier application can have several consequences: Loss of earlier filing date for affected claims Potential invalidity of the patent if issued Exposure to prior art that would have been otherwise excluded Possible rejection under 35 U.S.C. 102 or 103 The MPEP 211.05 provides an…
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