When did supplemental examination become available?
Supplemental examination became available on September 16, 2012. This new procedure was introduced as part of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on…
Read MoreWhat is the significance of the term “aggregation” in patent law?
The term “aggregation” in patent law refers to a historical concept that is no longer considered a valid basis for rejecting patent claims. According to MPEP 2173.05(k): “A claim should not be rejected on the ground of ‘aggregation.’” This guidance reflects a shift in patent examination practice. Historically, “aggregation” was used to describe claims that…
Read MoreHow has pre-AIA 35 U.S.C. 103(c) changed over time?
Pre-AIA 35 U.S.C. 103(c) has undergone several changes: Prior to November 29, 1999: It disqualified prior art under 35 U.S.C. 102(f) or (g) for obviousness determinations if commonly owned. November 29, 1999: Expanded to include prior art under 35 U.S.C. 102(e). December 10, 2004: The CREATE Act further amended it to include subject matter developed…
Read MoreWhen did the rule prohibiting third-party submissions on patent term adjustment take effect?
The rule prohibiting third-party submissions on patent term adjustment has been in effect for patents granted both before and after January 14, 2013. MPEP 2736 states: “For patents granted on or after January 14, 2013, 37 CFR 1.705(d) implements the provisions of 35 U.S.C. 154(b)(4)(B) and provides that no submission or petition on behalf of…
Read MoreWhat was the Lincoln Engineering case and its impact on patent law?
The Lincoln Engineering case (Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 37 USPQ 1 (1938)) was a significant ruling that established the Old Combination principle. According to MPEP 2173.05(j): “The principle was that an inventor who made an improvement or contribution to but one element of a generally old combination, should not be…
Read MoreHow has the view on negative limitations in patent claims evolved over time?
The view on negative limitations in patent claims has evolved significantly over time, becoming more accepting. The MPEP 2173.05(i) provides insight into this evolution: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. […] Some older cases were critical of negative limitations because they tended…
Read MoreWhere can I find guidance on Statutory Invention Registration (SIR) requests filed before March 16, 2013?
For guidance on Statutory Invention Registration (SIR) requests filed before March 16, 2013, you should refer to the ninth revision of the Eighth Edition of the MPEP published in August 2012. As stated in MPEP 1101: “Guidance on requests filed before March 16, 2013 may be found in the ninth revision of the Eighth Edition…
Read MoreWhat replaced the Defensive Publication Program in patent law?
According to MPEP 1513, the Defensive Publication Program was replaced by the Statutory Invention Registration (SIR) Program. Specifically, it states: “Effective May 8, 1985, the Statutory Invention Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293 – 1.297 replaced the former Defensive Publication Program.“ The SIR Program provided inventors with an alternative way to establish…
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