What is the difference between a derivation proceeding and using 37 CFR 1.130 provisions?
The MPEP 717.01(d) outlines the key differences between a derivation proceeding and using the provisions of 37 CFR 1.130: Derivation Proceeding: Used when there are competing claims to the same or substantially the same invention Resolves who the true inventor is when different inventive entities are involved Initiated by filing a petition pursuant to 37…
Read MoreWhat is the difference between 37 CFR 1.130(a) declarations and 37 CFR 1.132 affidavits?
The main difference between 37 CFR 1.130(a) declarations and 37 CFR 1.132 affidavits lies in their applicability to different versions of patent law: 37 CFR 1.130(a) declarations are used for applications subject to the first inventor to file provisions of the AIA (America Invents Act). 37 CFR 1.132 affidavits are used for applications subject to…
Read MoreWhat is derivation in the context of pre-AIA patent law?
In the context of pre-AIA patent law, derivation refers to a situation where the subject matter in a patent, application publication, or other publication is derived from the inventor’s or at least one joint inventor’s own invention. MPEP 715.01(c) explains: When the unclaimed subject matter of a patent, application publication, or other publication is the…
Read MoreWhat is the relationship between conception and diligence in patent law?
In patent law, there is a crucial relationship between conception and diligence. According to the MPEP, Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that the inventor or inventors had been diligent. Rather, applicant must show evidence of facts establishing…
Read MoreWhat is the significance of avoiding ‘undue multiplication of references’ in patent examination?
The concept of avoiding ‘undue multiplication of references’ in patent examination is mentioned in MPEP 707.07(g). The MPEP states: “The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references.” This guideline is significant because it aims to balance thoroughness with efficiency in patent examination. It means that…
Read MoreWhat is piecemeal examination in patent law?
Piecemeal examination refers to the practice of examining a patent application in a fragmented or incomplete manner. According to MPEP 707.07(g), “Piecemeal examination should be avoided as much as possible.” This means that patent examiners should strive to provide a comprehensive examination of each claim, addressing all valid grounds for rejection in a single office…
Read MoreWhat is diligence in patent law?
In patent law, diligence refers to the continuous effort an inventor makes to reduce their invention to practice after conception. As stated in the MPEP, In patent law, an inventor is either diligent at a given time or he is not diligent; there are no degrees of diligence. This means that diligence is a binary…
Read MoreWhat is a derivation proceeding in patent law?
A derivation proceeding is a legal process used to determine the true inventor when there are competing claims to the same or substantially the same invention. According to MPEP 717.01(d), an applicant or patent owner may file a petition for a derivation proceeding when: A rejection is based on a U.S. patent or patent application…
Read MoreHow does the USPTO view opinion testimony in patent interference cases?
The USPTO’s view on opinion testimony in patent interference cases has evolved over time. The MPEP 716.09 references a significant case that reexamined this issue: Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence. The…
Read MoreHow does the USPTO handle extension of time requests in reexamination proceedings?
The USPTO handles extension of time requests in reexamination proceedings differently from regular patent applications. According to MPEP 710.02(e): ‘Extensions of time in reexamination proceedings are governed by 37 CFR 1.550(c).’ This means that in reexamination cases: Extensions may be available, but they are not granted automatically. The requester must show sufficient cause for the…
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