What are the consequences of inequitable conduct in patent prosecution?
The consequences of inequitable conduct in patent prosecution are severe. MPEP 2016 outlines that such conduct leads to the unenforceability of the entire patent. As stated in the J. P. Stevens & Co. v. Lex Tex Ltd. case: “Inequitable conduct ‘goes to the patent right as a whole, independently of particular claims.’” This means that…
Read MoreWhat is the “clear reliance on the preamble” standard in patent claims?
The “clear reliance on the preamble” standard is a key concept in determining whether a preamble limits the scope of a claim. According to MPEP 2111.02, “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 indicates use of…
Read MoreHow can I check the accuracy of the data used for Patent Term Adjustment calculations?
The USPTO provides a way for applicants to check the accuracy of the data used in Patent Term Adjustment (PTA) calculations throughout the prosecution process. According to MPEP 2733: “Information as to how the patent term adjustment calculation has been made will be available through Patent Application Information Retrieval (PAIR) at www.uspto.gov/learning-and-resources/portal-applications. Applicants may routinely…
Read MoreWhat options does an applicant have in responding to a subject matter eligibility rejection?
An applicant has several options when responding to a subject matter eligibility rejection: Amend the claim to add additional elements or modify existing elements Present arguments explaining why the rejection is in error Submit evidence to traverse the rejection The MPEP outlines these options: “In response to a rejection based on failure to claim patent-eligible…
Read MoreCan an applicant amend claims to overcome a finding of equivalence?
Yes, applicants have the opportunity to amend claims to overcome a finding of equivalence in means-plus-function claims. MPEP 2184 provides two main approaches: Limiting the function: “An applicant may choose to amend the claim by further limiting the function so that there is no longer identity of function with that taught by the prior art…
Read MoreCan claims be amended after an interference proceeding?
The ability to amend claims after an interference proceeding depends on the outcome and the nature of the claims. MPEP 2308.01 provides guidance: Claims corresponding to a lost count cannot be amended to avoid the interference judgment. Non-involved claims or claims corresponding to a won count may potentially be amended, subject to examination. The MPEP…
Read MoreWhat actions can reduce patent term adjustment?
Several actions by the applicant can reduce patent term adjustment, including: Suspension of action at the applicant’s request Deferral of issuance of a patent Abandonment of the application or late payment of the issue fee Failure to file a petition to withdraw holding of abandonment or revive an application within 2 months Conversion of a…
Read MoreWhen can an examiner reopen prosecution after an appeal brief has been filed?
An examiner can reopen prosecution after an appeal brief has been filed to enter a new ground of rejection, but only with approval from the supervisory patent examiner. According to MPEP 1207.04: “The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s…
Read MoreWhat petitions are decided by the Office of Petitions?
The Office of Petitions, headed by a Deputy Commissioner for Patents, decides many important types of petitions. According to MPEP 1002.02(b), these include: Petitions to revive abandoned applications under 37 CFR 1.137 Petitions for unintentionally delayed priority claims under 37 CFR 1.55(e) and 1.78(c) and (e) Petitions to withdraw an application from issue under 37…
Read MoreWhat conflict-of-interest laws apply to USPTO employees regarding patent matters?
USPTO employees are subject to various conflict-of-interest laws and regulations regarding patent matters. MPEP 1702 references several important statutes and regulations: 18 U.S.C. 203 and 18 U.S.C. 205: These statutes prohibit government employees from prosecuting or aiding in the prosecution of patent applications before the USPTO. 5 CFR Chapter XVI: Regulations promulgated by the Office…
Read More