What 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 in patent law that allows an applicant to challenge an earlier-filed patent application by claiming that the named inventor in the earlier application derived the invention from the applicant’s inventor without authorization. According to MPEP 2310.01, the statutory basis for derivation proceedings is found in 35 U.S.C. 135,…
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…
Read MoreWhat types of inventions are considered patentable?
According to 35 U.S.C. 101, patentable inventions include: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. This statute outlines four main categories of patentable subject matter: processes,…
Read MoreWhat are public use proceedings in patent law?
Public use proceedings were a process in patent law that allowed third parties to challenge a patent application based on alleged public use or sale of the invention before the filing date. However, as of September 16, 2012, this process has been discontinued. According to the MPEP, Effective September 16, 2012, former 37 CFR. 1.292…
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