How does prosecution laches differ from statutory time limits in patent applications?
Prosecution laches is distinct from statutory time limits in patent applications. While statutory time limits are fixed by law, prosecution laches is a doctrine that addresses unreasonable and unexplained delays in prosecution. According to MPEP 2190: “While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of…
Read MoreCan a preamble be used to distinguish over the prior art during patent prosecution?
Yes, a preamble can be used to distinguish a claimed invention over the prior art during patent prosecution, but doing so may have significant consequences. The MPEP 2111.02 states: “Clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance…
Read MoreWhat are the recommended practices for maintaining records during patent prosecution?
What are the recommended practices for maintaining records during patent prosecution? The MPEP provides several recommendations for maintaining records during patent prosecution: Separate files: Keep separate files for each item of information known to be material to patentability. Document explanations: Record explanations of relevance for each item. Track submissions: Note which items have been submitted…
Read MoreHow can an applicant overcome a rejection of a product-by-process claim?
An applicant has several options to overcome a rejection of a product-by-process claim. According to MPEP 2113: “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of…
Read MoreHow can inventors overcome an obviousness rejection based on Art Recognized Suitability?
Inventors facing an obviousness rejection based on Art Recognized Suitability can employ several strategies to overcome the rejection: Demonstrate unexpected results: Show that the invention produces results that would not have been predicted by a person of ordinary skill in the art. Prove superior properties: Provide evidence that the chosen material or component performs better…
Read MoreCan a lack of antecedent basis be overcome during patent prosecution?
Can a lack of antecedent basis be overcome during patent prosecution? Yes, a lack of antecedent basis can often be overcome during patent prosecution. The MPEP 2173.05(e) provides guidance on this matter: “A claim is not per se indefinite if the body of the claim recites additional elements which do not appear in the preamble.…
Read MoreHow can an applicant overcome an indefiniteness rejection based on relative terminology?
An applicant can overcome an indefiniteness rejection based on relative terminology in several ways. According to MPEP 2173.05(b), “During prosecution, an applicant may overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure.” This can…
Read MoreWhat options does a patent owner have if they disagree with a final rejection in reexamination?
If a patent owner disagrees with a final rejection in reexamination, they have several options: File a petition under 37 CFR 1.181 requesting that the final rejection be withdrawn and prosecution be reopened. File a petition under 37 CFR 1.181 requesting entry of an amendment that was refused by the examiner. File a notice of…
Read MoreCan an inventor change what they regard as their invention during patent prosecution?
Yes, an inventor or joint inventor can change what they regard as their invention during the pendency of a patent application. MPEP 2172 states: “35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 does not prohibit the inventor or a joint inventor from changing what inventor or a joint inventor regards as…
Read MoreCan an applicant request an interview after a tentative abstract idea rejection?
Yes, applicants can request an interview after receiving a rejection based on a tentative abstract idea. The MPEP encourages this practice: In response to a Step 2B rejection of a claim reciting a tentative abstract idea, an interview with the examiner may be conducted, which may help advance prosecution and identify patent eligible subject matter.…
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