What is the purpose of the “substantial new question of patentability” requirement in reexamination?
The “substantial new question of patentability” requirement serves to protect patentees from unnecessary reexaminations. MPEP 2244 explains: “The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations.” This requirement ensures that reexaminations are only conducted when there is a legitimate basis for questioning the validity of…
Read MoreHow does the invalidation of the Old Combination principle affect patent applicants?
The invalidation of the Old Combination principle generally benefits patent applicants by removing a potential barrier to patentability. According to MPEP 2173.05(j): “Accordingly, a claim should not be rejected on the ground of old combination.” This means that patent applicants can now claim inventions that combine old elements with new or improved elements without fear…
Read MoreWhat is the significance of the “Mere Function of Machine” rule for patent applicants?
The “Mere Function of Machine” rule is significant for patent applicants because it protects their process or method claims from being unfairly rejected. According to MPEP 2173.05(v): “The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which it is a part discloses an apparatus…
Read MoreWhat are intervening rights in reinstated patents?
Intervening rights in reinstated patents are legal protections provided by 35 U.S.C. 41(c)(2) for individuals or businesses who used or made substantial preparations to use a patented invention during the period when the patent had lapsed due to non-payment of maintenance fees, but before it was reinstated. According to MPEP § 2591: “No patent, the…
Read MoreWhat is the impact of intervening rights on patent enforcement?
Intervening rights can significantly impact patent enforcement after a patent has been reinstated. According to MPEP § 2591, the patent holder’s ability to enforce their rights may be limited against certain parties who acted during the lapse period. The MPEP states: “No patent, the term of which has been maintained as a result of the…
Read MoreWhat is the significance of the grace period in relation to intervening disclosures?
The grace period is significant in relation to intervening disclosures because it protects inventors from certain disclosures made by third parties during the one-year period before the effective filing date of the claimed invention. MPEP 2155.02 explains: “The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the ‘subject matter disclosed [in the intervening disclosure] had,…
Read MoreWhere can I find a list of Contracting Parties to the Hague Agreement?
If you’re looking for an up-to-date list of Contracting Parties to the Hague Agreement, the MPEP 2904 provides guidance on where to find this information: “A list of the Contracting Parties to the Hague Agreement is maintained on the website of the World Intellectual Property Organization ( www.wipo.int/hague/en/members/ ).” To access the current list of…
Read MoreWhat is the significance of the two-year time limit for broadening reissue applications?
What is the significance of the two-year time limit for broadening reissue applications? The two-year time limit for filing broadening reissue applications is a critical deadline in patent law. MPEP 1410 states: “A broadening reissue application must be filed within two years from the grant of the original patent.” This time limit is mandated by…
Read MoreHow does rejoinder affect the scope of patent protection?
Rejoinder can significantly affect the scope of patent protection by allowing previously withdrawn claims to be included in the granted patent. Here’s how: It expands the protection to include additional embodiments or applications of the invention. Rejoined process claims can provide protection for methods of making or using the allowable product. It allows for a…
Read MoreCan a reissue application be filed to add narrower claims?
Yes, a reissue application can be filed solely to add narrower claims to a patent. The MPEP cites the case of In re Tanaka, which states: the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.…
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