What happens if a generic claim is presented after a species claim has been issued in a patent?
If a generic claim is presented in a separate application after a patent has been issued claiming one or more species within the scope of the generic claim, the Office may reject the generic claim on the grounds of nonstatutory double patenting. This can occur when: The patent and application have at least one common…
Read MoreCan a double patenting rejection occur between a design patent and a utility patent?
Yes, a double patenting rejection can occur between a design patent and a utility patent. This is known as a design-utility “same invention” double patenting rejection. The MPEP states: A design – utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35…
Read MoreWhat are the consequences of failing to show diligence in filing a reissue application?
Failing to show diligence in filing a reissue application can have serious consequences, potentially resulting in the rejection of the reissue application. The MPEP 1403 states: “If it is determined that there was a failure to exercise due diligence in filing the reissue application, the application should be rejected as a recapture of the subject…
Read MoreHow can I avoid a statutory double patenting rejection?
A statutory double patenting rejection can be avoided by: Amending the conflicting claims so that they are not coextensive in scope Canceling the conflicting claims in all pending applications (if the conflicting claims are in one or more pending applications and a patent) Canceling the conflicting claims in all but one of the pending applications…
Read MoreWhat options does an applicant have when faced with a Form Paragraph 8.29 rejection?
When an applicant receives a rejection using Form Paragraph 8.29, they have two main options: Cancel patentably indistinct claims: The applicant can choose to cancel the patentably indistinct claims from all but one application. This eliminates redundancy and streamlines the examination process. Maintain a clear line of demarcation: The applicant can choose to keep the…
Read MoreCan a rejected design patent application be amended to remove offensive content?
While the MPEP 1504.01(e) does not specifically address amending rejected design patent applications to remove offensive content, general patent prosecution principles suggest that it may be possible in some cases. However, there are important considerations: Statutory Basis: The rejection is based on 35 U.S.C. 171, which defines the statutory requirements for design patents. New Matter:…
Read MoreWhat are the grounds for rejecting claims in a patent application?
What are the grounds for rejecting claims in a patent application? The grounds for rejecting claims in a patent application are specified in MPEP 706 and include: Lack of novelty under 35 U.S.C. 102 Obviousness under 35 U.S.C. 103 Double patenting Lack of utility under 35 U.S.C. 101 Lack of enablement or written description under…
Read MoreWhat date must be overcome in a 37 CFR 1.131(a) affidavit or declaration?
When filing an affidavit or declaration under 37 CFR 1.131(a), the date that must be overcome is the effective date of the reference being used in the rejection. The MPEP clearly states: The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference…
Read MoreWhat happens if a 37 CFR 1.130(a) declaration is found insufficient?
If a 37 CFR 1.130(a) declaration is found insufficient by the USPTO examiner, several outcomes may occur: The examiner may maintain the rejection based on the prior art disclosure. The applicant may be given an opportunity to provide additional evidence or clarification. The applicant might need to consider alternative strategies to overcome the rejection. The…
Read MoreWhat are common reasons for an affidavit or declaration under 37 CFR 1.132 to be considered insufficient?
The MPEP outlines several reasons why an affidavit or declaration under 37 CFR 1.132 might be considered insufficient to overcome a rejection: Lack of relevance: It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the…
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