What is prosecution laches in patent law?

Prosecution laches is a legal doctrine that can result in the forfeiture of patent rights due to unreasonable and undue delay in prosecution. The Federal Circuit affirmed this principle in In re Bogese, stating: “[Applicant] filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity…

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What is considered ‘substantive involvement’ in a patent application?

The MPEP doesn’t provide a precise definition of ‘substantive involvement’, but it does offer guidance on who is considered substantively involved in the preparation or prosecution of a patent application. According to 37 CFR 1.56(c), this includes: “Every other person who is substantively involved in the preparation or prosecution of the application and who is…

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How do secrecy orders affect patent term adjustment?

Secrecy orders can have a significant impact on patent term adjustment (PTA). According to MPEP 2731, there are several ways in which a secrecy order can affect PTA: “37 CFR 1.703(d) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(ii) and indicates that the period of adjustment under 37 CFR 1.702(d) is the sum of the…

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How does a restriction requirement affect biological deposit obligations?

A restriction requirement can impact biological deposit obligations in patent applications. The MPEP 2411.01 provides guidance on this situation: “In the event of a restriction requirement, all claims requiring a deposit must be limited to the elected subject matter that relates to the deposit.” This means that if a restriction requirement is made, and the…

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How can an applicant resolve ambiguities in functional limitations?

The MPEP provides several ways an applicant can resolve ambiguities in functional limitations during prosecution: Use a quantitative metric instead of a qualitative functional feature. For example, include a numeric limitation for a physical property. Demonstrate that the specification provides a formula for calculating a property, along with examples that meet and do not meet…

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How does res judicata apply in patent law?

Res judicata in patent law prevents patent owners or applicants from seeking claims that are not patentably distinct from claims previously refused or canceled during administrative trials or federal court proceedings. According to MPEP 2190: “A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim…

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