What is the “written description requirement” in patent law?
The written description requirement is a crucial aspect of patent law that ensures an inventor has adequately described their invention in the patent application. According to MPEP 2304.02(d), “The written description requirement is met so long as the application or priority application sufficiently described the subject matter to a person skilled in the art.” It’s…
Read MoreWho decides whether to institute a derivation proceeding?
The decision to institute a derivation proceeding is made by the Director of the United States Patent and Trademark Office (USPTO). As stated in MPEP 2310.01, which cites 35 U.S.C. 135(a)(1): “Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director…
Read MoreWho can submit prior art or written statements to the USPTO for a patent?
According to MPEP 2203, any person can submit prior art or written statements to the USPTO for a patent. The MPEP states: “Any person” may be a corporate or governmental entity as well as an individual. “Any person” includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without…
Read MoreWho can file a request for ex parte reexamination?
According to MPEP 2212, “any person” may file a request for ex parte reexamination of a patent, as stated in 35 U.S.C. 302 and 37 CFR 1.510(a). The MPEP specifically notes that: “Corporations and/or governmental entities are included within the scope of the term ‘any person.’“ This broad definition includes patentees, licensees, potential licensees, attorneys,…
Read MoreWhen does experimental use end in patent law?
Experimental use ends when the invention is actually reduced to practice. The MPEP states: “Experimental use ‘means perfecting or completing an invention to the point of determining that it will work for its intended purpose.’ Therefore, experimental use ‘ends with an actual reduction to practice.’” (MPEP 2133.03(e)(3)) Once the inventor is satisfied that the invention…
Read MoreWhen does experimental use of an invention end?
Experimental use of an invention ends when the invention is actually reduced to practice. According to the MPEP, Experimental use “means perfecting or completing an invention to the point of determining that it will work for its intended purpose.” Therefore, experimental use “ends with an actual reduction to practice.” (MPEP 2133.03(e)(3)) This means that once…
Read MoreWhen does the best mode requirement apply in patent applications?
The best mode requirement applies at the time of filing the patent application. It requires inventors to disclose the best way they know of carrying out their invention at that specific point in time. MPEP 2165.02 clarifies this timing: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor]…
Read MoreWhat is supplemental examination?
Supplemental examination is a process provided by 35 U.S.C. 257 that allows a patent owner to request the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent.” As stated in the MPEP: “35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or…
Read MoreWhat is the “on sale” bar under pre-AIA 35 U.S.C. 102(b)?
The “on sale” bar under pre-AIA 35 U.S.C. 102(b) prevents an inventor from obtaining a patent if the invention was on sale in the United States more than one year prior to the date of the application for patent. The Supreme Court in Pfaff v. Wells Electronics, Inc. established a two-part test for determining if…
Read MoreWhat is an interference in patent law?
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings. According to MPEP 2304, “The suggestion for an interference may come from an applicant…
Read More