What is an Inter Partes Reexamination Certificate?
An Inter Partes Reexamination Certificate is a document issued at the conclusion of an inter partes reexamination proceeding, unless merged with a reissue application. As stated in MPEP 2690: “An inter partes reexamination certificate is issued at the close of each inter partes reexamination proceeding in which reexamination has been ordered under 37 CFR 1.931,…
Read MoreWhat is an “enabling disclosure” in patent law?
An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states: “A reference contains an ‘enabling disclosure’ if the public was…
Read MoreWhat is analogous art in patent law?
Analogous art in patent law refers to prior art that can be used in an obviousness rejection under 35 U.S.C. 103. According to MPEP 2141.01(a), a reference is considered analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different…
Read MoreWhat happens after reexamination is ordered under 35 U.S.C. 304?
After reexamination is ordered under 35 U.S.C. 304, the examiner will consider any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 when preparing the first Office action. As stated in MPEP 2253: “Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance…
Read MoreWhat constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is in public use before the critical date and is ready for patenting. The Federal Circuit has explained that the proper test for the public use prong includes two key elements: The purported use was accessible to the public; or The invention was…
Read MoreWhat constitutes a “public use” under 35 U.S.C. 102(a)(1)?
A “public use” under 35 U.S.C. 102(a)(1) is defined in the MPEP 2152.02(c) as follows: “Public use” includes any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public.…
Read MoreWhat constitutes a “printed publication” in patent law?
A “printed publication” in patent law refers to a document that is sufficiently accessible to the public interested in the art before the critical date. As stated in MPEP 2128.01, “dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” The Federal Circuit in Constant v. Advanced…
Read MoreWhat constitutes conception of an invention?
Conception is a critical element in determining inventorship. The MPEP provides guidance on what constitutes conception: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se,…
Read MoreWhat is a well-established utility in patent law?
A well-established utility in patent law is one that meets specific criteria as defined by the USPTO. According to the MPEP, An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or…
Read MoreWhat is the Wayback Machine® and how is it used in patent law?
The Wayback Machine® is a digital archive maintained by the Internet Archive, a non-profit organization. It’s used to view archived versions of websites as they existed at specific points in time. In patent law, the Wayback Machine® can be a valuable tool for establishing the public accessibility of online content on a specific date. According…
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