What is the relationship between undue experimentation and enablement in patent law?
What is the relationship between undue experimentation and enablement in patent law? The concept of undue experimentation is closely tied to the enablement requirement in patent law. According to MPEP 2164, “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent…
Read MoreWhat are “Use” Claims in patent law?
“Use” claims are a type of patent claim that attempts to claim a process without setting forth specific steps. According to MPEP 2173.05(q), these claims often raise issues of indefiniteness under 35 U.S.C. 112(b). The MPEP provides an example: “[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon”…
Read MoreWhat happens to unauthorized or improper papers filed in a supplemental examination proceeding?
According to MPEP 2813, unauthorized or improper papers filed in a supplemental examination proceeding are not entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. Specifically, 37 CFR 1.620(c) states: “if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not…
Read MoreWhat types of persons typically file ex parte reexamination requests?
MPEP 2212 provides a non-exhaustive list of persons who are likely to use the ex parte reexamination process under 35 U.S.C. 302: Patentees Licensees Potential licensees Attorneys without identification of their real client in interest Infringers Potential exporters Patent litigants Interference applicants International Trade Commission respondents This diverse list reflects the various stakeholders in the…
Read MoreWhat types of prior art can be submitted to the USPTO under 35 U.S.C. 301?
According to MPEP 2203, the types of prior art that can be submitted to the USPTO under 35 U.S.C. 301 include: Prior art patents Printed publications Written statements Additional information The MPEP states: The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional…
Read MoreWhat triggers intervening rights in inter partes reexamination?
Intervening rights in inter partes reexamination are triggered when a patent’s claims are amended or new claims are added during the reexamination process. The MPEP 2693 states: “Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that…
Read MoreWhat are the time limits for filing an appeal brief in ex parte reexamination?
The time limit for filing an appeal brief in ex parte reexamination is two months from the date of the appeal. As stated in the MPEP: “The time for filing the appeal brief is two (2) months from the date of the appeal.” This time limit is important for patent owners to ensure their appeal…
Read MoreWhat is the time limit for filing a foreign priority claim in international design applications?
The time limit for filing a foreign priority claim in international design applications is specified in 35 U.S.C. 119(a) and 172, and 37 CFR 1.55(b)(1). According to MPEP 2920.05(d): “Pursuant to 35 U.S.C. 119(a) and 172, and 37 CFR 1.55(b)(1), the nonprovisional international design application must be filed not later than six months after the…
Read MoreWhat is a “threshold issue” in patent interference proceedings?
A threshold issue in patent interference proceedings is a critical concept defined in 37 CFR 41.201. The MPEP states: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference.” One important threshold issue specifically mentioned is: “Unpatentability for lack of written description under…
Read MoreCan a third party requester intervene in court review of a reexamination decision?
While third party requesters cannot directly appeal reexamination decisions, they may be allowed to intervene in court reviews under certain circumstances. The MPEP 2279 states: “While the reexamination statutory provisions do not provide for participation by any third party requester during any court review, the courts have permitted intervention by a third party requester in…
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