How does the automatic two-month extension work for responses to final rejections in reexamination?
In ex parte reexamination proceedings, an automatic two-month extension is granted for the first response to a final rejection. Key points include: The filing of a timely first response to a final rejection is construed as including a request to extend the shortened statutory period for an additional two months. This applies even if the…
Read MoreHow long does an attorney-client relationship last in patent matters?
MPEP 2622 addresses the duration of attorney-client relationships in patent matters, stating: “As a general rule, the attorney-client relationship terminates when the purpose for which the attorney was employed is accomplished; e.g., the issuance of a patent to the client.“ However, the section also notes that attorneys have ongoing responsibilities even after the formal relationship…
Read MoreWhat is the “Art Recognized Suitability for an Intended Purpose” doctrine in patent law?
The “Art Recognized Suitability for an Intended Purpose” doctrine is a legal principle in patent law that relates to the obviousness of an invention. It states that selecting a known material or component for its recognized suitability for an intended use can support a prima facie case of obviousness. As stated in MPEP 2144.07: “The…
Read MoreWhat are the rules for extending time to file an appeal brief or reply brief in reexamination?
The rules for extending time to file an appeal brief or reply brief in ex parte reexamination are as follows: Extensions are governed by 37 CFR 1.550(c). For patent owner requested or Director ordered reexaminations, a “no cause” extension of up to two months from the time permitted to file the brief can be requested.…
Read MoreWhat is the “anticipation by inherency” doctrine in patent law?
The “anticipation by inherency” doctrine in patent law refers to situations where a prior art reference does not explicitly disclose a claimed feature, but that feature is inherently present in the prior art. This concept is particularly relevant when dealing with ranges in patent claims. According to MPEP 2112: “The inherent teaching of a prior…
Read MoreWhat are the requirements for a reexamination requester to remain anonymous?
For reexamination requesters who wish to remain anonymous, MPEP 2203 provides specific guidance: A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for…
Read MoreHow does analogous art apply in different technical fields?
MPEP 2141.01(a) provides examples of how analogous art is applied in various technical fields: Chemical Arts: The MPEP cites Ex parte Bland, where all references concerned with absorbing biologically active materials on carriers were considered pertinent. Mechanical Arts: The MPEP notes, “In a simple mechanical invention a broad spectrum of prior art must be explored…
Read MoreHow does the AIA define “public use” for patent purposes?
How does the AIA define “public use” for patent purposes? The America Invents Act (AIA) provides a specific definition of “public use” for patent purposes. According to MPEP 2152.02(c): “Under AIA 35 U.S.C. 102(a)(1), a person shall be entitled to a patent unless the claimed invention was in public use before the effective filing date…
Read MoreHow does the AIA affect experimental use considerations?
The America Invents Act (AIA) has introduced changes that affect how experimental use is considered in patent law. The MPEP section on experimental use includes an editor’s note stating: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in…
Read MoreHow does the America Invents Act (AIA) affect the interpretation of commercial exploitation?
The America Invents Act (AIA) has introduced changes to how commercial exploitation is interpreted in patent law. The MPEP notes: “This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note).” For applications subject to AIA…
Read More