How does submitting a declaration under 37 CFR 1.131(a) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?
Submitting a declaration under 37 CFR 1.131(a), also known as an affidavit or declaration of prior invention, can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by establishing that the inventor had conceived and reduced the invention to practice before the critical date. This process is often referred to as “swearing behind” a reference. The…
Read MoreWhen can I file a Notice of Appeal?
You can file a Notice of Appeal after any of your claims has been twice rejected, regardless of whether the rejection is final or not. The MPEP states: “A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected.“ It’s important…
Read MoreWhat is a Notice of Appeal in patent applications?
A Notice of Appeal is a formal document filed by an applicant who is dissatisfied with the primary examiner’s decision in the second or subsequent rejection of their claims. It allows the applicant to appeal to the Patent Trial and Appeal Board (PTAB) for review of the examiner’s rejection. According to MPEP 1204, “Under 37…
Read MoreWhat should patent examiners consider when selecting references for rejection?
When selecting references for rejection, patent examiners should consider several factors to ensure an efficient and effective examination process. According to MPEP 904.03: In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of…
Read MoreWhat are the common grounds for rejecting a plant patent claim?
Plant patent claims can be rejected on similar grounds as other patent types. The MPEP 1610 mentions two common grounds for rejection: 35 U.S.C. 102 (Novelty): A claim may be rejected if it fails to patentably distinguish over prior art. The following form paragraph may be used: “The claim is rejected under 35 U.S.C. 102…
Read MoreHow can I overcome a nonstatutory double patenting rejection?
To overcome a nonstatutory double patenting rejection, you can file a terminal disclaimer. The MPEP states: A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly…
Read MoreWhat constitutes offensive subject matter in design patent applications?
Offensive subject matter in design patent applications includes content that could be deemed offensive to any race, religion, sex, ethnic group, or nationality. This typically includes caricatures or depictions that are discriminatory or disrespectful. According to MPEP 1504.01(e): “Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic…
Read MoreHow does the USPTO handle design patent applications with offensive subject matter?
The USPTO rejects design patent applications that disclose offensive subject matter. According to MPEP 1504.01(e): “Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.” Key…
Read MoreWhat is nonstatutory double patenting in the context of generic and species claims?
Nonstatutory double patenting is a judicial doctrine that prevents the extension of patent rights beyond the statutory term through subsequent patent applications. In the context of generic and species claims, MPEP 806.04(i) states: “If a generic claim is presented in a separate application after the issuance of a patent claiming one or more species within…
Read MoreHow should examiners handle references with recent publication dates?
Examiners should carefully consider how to handle references with recent publication dates during the patent examination process. The MPEP 904.03 provides guidance on this matter: Sometimes the best reference will have a publication date less than a year prior to the application filing date, hence it will be open to being overcome under 37 CFR…
Read More