How are petitions handled in a supplemental examination proceeding?
MPEP 2813 addresses the handling of petitions in supplemental examination proceedings. According to the guidelines: “37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate…
Read MoreHow is “person” defined in the Hague Agreement for international design applications?
The Hague Agreement provides a specific definition for the term “person” in the context of international design applications. According to MPEP 2904: “Article 1(ix) of the Hague Agreement defines a ‘person’ as a natural person or a legal entity” This definition encompasses: Natural persons (individuals) Legal entities (such as corporations, organizations, or other legally recognized…
Read MoreWhat types of testing are permitted under experimental use in patent law?
The MPEP outlines several types of testing that may be considered permissible experimental use: Developmental testing in the normal context of technological development Experimentation to determine utility under 35 U.S.C. 101 Testing of functional features in design patent applications However, the MPEP explicitly states that market testing is not permitted: “Experimentation to determine product acceptance,…
Read MoreWhat constitutes permitted experimental activity in patent law?
Permitted experimental activity in patent law generally includes testing an invention in the normal context of its technological development. According to MPEP 2133.03(e)(6), “Testing of an invention in the normal context of its technological development is generally within the realm of permitted experimental activity.” This can include: Developmental testing Experimentation to determine utility as applied…
Read MoreHow can a patentee add or amend claims during an interference?
A patentee can add or amend claims during an interference by filing a reissue application. According to MPEP 2308.02: “A patentee may file a reissue application in support of a motion to add or amend a claim.” This process allows patentees to modify their claims in response to issues raised during the interference proceeding, potentially…
Read MoreWhat is considered “patented” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), “patented” refers to a prior patent that discloses the claimed invention before the effective filing date of the current application. The MPEP states: “AIA 35 U.S.C. 102(a)(1) indicates that a prior patent of a claimed invention will preclude the grant of a subsequent patent on the claimed invention.” This means…
Read MoreWhat is the role of the Patent Trial and Appeal Board in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a crucial role in derivation proceedings. According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named…
Read MoreWhen does a patent become prior art under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), a patent generally becomes prior art on its grant date. The MPEP states: “The effective date of the patent for purposes of determining whether the patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant date of the patent.” However, there’s an exception for secret patents: “There…
Read MoreWhat happens to the patent file after a Certificate of Extension is issued?
After a Certificate of Extension is issued, several changes occur to the patent file: The certificate is added to the official patent file. Original papers from the extension application are transferred to the official patent file. A copy of the certificate is added to the patent electronic database. The patent is added to the list…
Read MoreWhat are the limitations on amendments after the second Office action in patent reexamination?
After the second Office action in patent reexamination, which is typically final, there are limitations on amendments. MPEP 2269 states: “Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.” This means…
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