What are product-by-process claims in patent law?
What are product-by-process claims in patent law? Product-by-process claims are a type of patent claim that define a product in terms of the process used to make it. According to MPEP 2173.05(p), “A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made,…
Read MoreCan procedural matters be discussed in inter partes reexamination proceedings?
Yes, questions on strictly procedural matters may be discussed with the parties in inter partes reexamination proceedings. The MPEP 2685 provides guidance: “Questions on strictly procedural matters may be discussed with the parties. The guidance to follow is that any information which a person could obtain by reading the file (which is open to the…
Read MoreHow does prior publication affect joint inventorship?
Prior publication of a joint inventor’s contribution does not necessarily negate joint inventorship. The MPEP cites the case Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., which states: “[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked…
Read MoreWhat role does the state of the prior art play in determining enablement?
The state of the prior art is a crucial factor in determining enablement, as it provides context for assessing whether a person skilled in the art can make and use the invention without undue experimentation. The MPEP Section 2164.06(b) illustrates this through several cases: In In re Wright, the court considered evidence that “in 1988,…
Read MoreHow does the breadth of a prior art range affect obviousness determinations?
The breadth of a prior art range can significantly impact obviousness determinations in patent law. According to MPEP 2144.05: “One factor that may weigh against maintaining an obviousness rejection based on optimization of a variable disclosed in a range in the prior art is where an applicant establishes that the prior art disclosure of the…
Read MoreWhat does “prima facie obviousness” mean in the context of Art Recognized Suitability?
In the context of Art Recognized Suitability, “prima facie obviousness” refers to a legal standard where, at first glance, an invention appears to be obvious based on the selection of known materials for their recognized purpose. The MPEP 2144.07 states: “The selection of a known material based on its suitability for its intended use supported…
Read MoreWhat is pre-AIA 35 U.S.C. 103(b) and when does it apply?
Pre-AIA 35 U.S.C. 103(b) is a provision applicable to biotechnological processes. It precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnological compositions of matter under pre-AIA 35 U.S.C. 103(a). This provision is only applicable to applications subject to pre-AIA 35 U.S.C. 102. As stated in the MPEP: Only…
Read MoreWhat is the relevance of pre-AIA 35 U.S.C. 102(g) in patent law?
Pre-AIA 35 U.S.C. 102(g) is a provision in U.S. patent law that was relevant before the America Invents Act (AIA) came into effect. According to MPEP 2138.02: “Prior art under pre-AIA 35 U.S.C. 102(g) is limited to an invention that is made.” This section of the law was significant because it: Defined what could be…
Read MoreHow does the Patent Law Treaties Implementation Act (PLTIA) affect provisional application benefits?
The Patent Law Treaties Implementation Act (PLTIA) has introduced important changes regarding the benefit claims for provisional applications. According to MPEP 2133.02(a): “Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the…
Read MoreHow does the Pfaff test apply to the on-sale bar in patent law?
The Pfaff test, established by the Supreme Court in Pfaff v. Wells Electronics, Inc., is crucial for determining whether an invention is “on sale” for purposes of the on-sale bar in patent law. According to MPEP 2152.02(d), the Pfaff test requires that: The product must be the subject of a commercial offer for sale; and…
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