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…

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Can 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…

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What 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…

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How 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…

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How 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…

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