What is the legal basis for the written description requirement?
The written description requirement is grounded in U.S. patent law, specifically in 35 U.S.C. 112(a). The MPEP 2163.01 references this legal basis: “If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack…
Read MoreWhat is the legal basis for exemption from replacement deposits?
The legal basis for exemption from replacement deposits of biological materials is provided in the Code of Federal Regulations and is referenced in the Manual of Patent Examining Procedure (MPEP). Specifically: “The provisions of 37 CFR 1.805(h) indicate that a replacement deposit is not required even though the depository cannot furnish samples, under certain conditions,…
Read MoreWhat is the legal basis for prohibiting third-party submissions on patent term adjustment?
The legal basis for prohibiting third-party submissions on patent term adjustment is rooted in both statutory law and USPTO regulations. MPEP 2736 cites the following: “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 a…
Read MoreWhat is the legal basis for appeals in patent reexamination proceedings?
The legal basis for appeals in patent reexamination proceedings is primarily found in U.S. statutes and has evolved over time. According to MPEP 2279: 1. For reexaminations filed on or after November 29, 1999, and commenced before September 16, 2012, the basis is “the version of 35 U.S.C. 141 and 35 U.S.C. 145 as they…
Read MoreWhat is the legal basis for ex parte reexamination requests?
The legal basis for ex parte reexamination requests is established in United States patent law. The MPEP section refers to this statute: “…request for ex parte reexamination filed under 35 U.S.C. 302…” 35 U.S.C. 302 is the specific statute that provides the legal foundation for ex parte reexamination requests. This law outlines the requirements and…
Read MoreWhat is the legal basis for the best mode requirement?
The best mode requirement is derived from 35 U.S.C. 112(a), which states that the specification of a patent application “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” This requirement is further elaborated in the Manual of Patent Examining Procedure (MPEP) Section 2165. The purpose of…
Read MoreHow does the KSR decision affect the determination of analogous art?
The Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), did not fundamentally change the test for analogous art as stated in In re Bigio. According to MPEP 2141.01(a): “The Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), did not change…
Read MoreWhat are the key requirements for an appeal brief in ex parte reexamination?
An appeal brief in ex parte reexamination must meet several key requirements, as outlined in the MPEP: A fee as set forth in 37 CFR 41.20(b)(2) is required. The brief must include authorities and arguments on which the appellant will rely. A summary of claimed subject matter, referring to the specification by page and line…
Read MoreWhat are the key factors in proving experimental use?
According to the MPEP and relevant case law, the key factors in proving experimental use are: Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation. Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.…
Read MoreWhat is a joint research agreement under pre-AIA 35 U.S.C. 103(c)?
A joint research agreement under pre-AIA 35 U.S.C. 103(c) is defined as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention, that was in effect on or before the date the claimed…
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