What is routine optimization in patent law?
Routine optimization refers to the process of finding optimal or workable ranges through routine experimentation. According to MPEP 2144.05: “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” This principle is based on the case In re…
Read MoreCan a patentability decision favoring the patentee be reviewed in ex parte reexamination?
No, a patentability decision favoring the patentee cannot be reviewed in ex parte reexamination. The MPEP 2273 clearly states: “The reexamination statute does not provide for review of a patentability decision favoring the patentee.” This principle is supported by case law, specifically “Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988).” This limitation is an…
Read MoreWhat is a result-effective variable in patent law?
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05: “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable…
Read MoreAre there any restrictions on who can file for ex parte reexamination?
Yes, there is one specific restriction mentioned in MPEP 2212: “The only ‘person’ who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter…
Read MoreWhat are the requirements for restoring the right of priority in international design applications?
Restoring the right of priority in international design applications may be possible if there was a delay in filing the application within the six-month priority period. According to MPEP 2920.05(d): “Where there was a delay in filing the subsequent application within this six month period, the right of priority may be restored under the conditions…
Read MoreWhat are the requirements for reproductions in international design applications?
Reproductions in international design applications must comply with the requirements of Rule 9 and Part Four of the Administrative Instructions. As stated in MPEP 2920.04(b): “A reproduction may be either a drawing, in black and white or in color, or a photograph of the industrial design. As the drawing or photograph constitutes the entire visual…
Read MoreWhat is the procedure for seeking relief from prescribed time limits in international design applications?
The procedure for seeking relief from prescribed time limits in international design applications is outlined in 37 CFR 1.1051. This procedure allows applicants to excuse unintentional delays in meeting time limits under the Hague Agreement for requirements related to international design applications. The key components of this procedure include: Filing a petition with the USPTO…
Read MoreWhat is the relationship between interfering subject matter and obviousness in patent law?
The relationship between interfering subject matter and obviousness in patent law is closely intertwined. According to MPEP 2301.03: An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. This statement…
Read MoreWhat regulations govern the conduct of derivation proceedings?
The conduct of derivation proceedings is governed by regulations prescribed by the Director of the United States Patent and Trademark Office (USPTO). According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and…
Read MoreCan a reexamination proceeding itself be involved in an interference?
No, a reexamination proceeding itself cannot be involved in an interference proceeding. The MPEP clearly states: “Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding.“ This is based on the language of 35 U.S.C. 135(a), which…
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