What are the consequences of failing to comply with the disclosure requirements of 35 U.S.C. 112(a)?

Failing to comply with the disclosure requirements of 35 U.S.C. 112(a) can have serious consequences for a patent application or an issued patent. According to the MPEP: “Failure to fully comply with the disclosure requirements could result in the denial of a patent, or in a holding of invalidity of an issued patent.“ The potential…

Read More

What are the consequences of an inadequate description of a biological material deposit?

What are the consequences of an inadequate description of a biological material deposit? An inadequate description of a biological material deposit can have serious consequences for a patent application: Rejection of the application for lack of written description under 35 U.S.C. 112(a) Inability to demonstrate possession of the claimed invention Difficulty in enforcing the patent…

Read More

What are the consequences of failing to comply with the written description requirement under 35 U.S.C. 112(a)?

What are the consequences of failing to comply with the written description requirement under 35 U.S.C. 112(a)? Failing to comply with the written description requirement under 35 U.S.C. 112(a) can result in the rejection of a patent application. The MPEP states: “A description that does not meet the written description requirement will result in a…

Read More

Can a claim be rejected under 35 U.S.C. 112(b) if the description is not commensurate with the claim scope?

No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the…

Read More

What is the burden of proof for inherency in patent rejections?

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”…

Read More

What is anticipation in patent law?

Anticipation in patent law refers to a situation where a claimed invention is rejected under 35 U.S.C. 102 because it is not novel over a prior art disclosure. The MPEP states: A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is…

Read More

How is an improper Markush grouping rejection addressed?

An improper Markush grouping rejection can be addressed in several ways: Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use. Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use. Show that the alternatives…

Read More