How does common ownership affect rejections under pre-AIA 35 U.S.C. 102(e)/103?

Common ownership can have a significant impact on rejections under pre-AIA 35 U.S.C. 102(e)/103. According to MPEP 715.01(b): Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing…

Read More

What is the burden of proof in patent rejections?

In patent examination, the burden of proof for rejecting claims lies with the United States Patent and Trademark Office (USPTO). MPEP 707.07(d) states: “The burden is on the Office to establish any prima facie case of unpatentability (see, e.g., MPEP § 2103), thus the reasoning behind any rejection must be clearly articulated.” This means that…

Read More

What is the difference between anticipation and obviousness in patent rejections?

What is the difference between anticipation and obviousness in patent rejections? Anticipation and obviousness are two distinct grounds for rejecting a patent application based on prior art: Anticipation (35 U.S.C. 102): This occurs when a single prior art reference discloses all elements of the claimed invention. As stated in MPEP 2131, “A claim is anticipated…

Read More

What is ‘swearing behind’ a reference?

‘Swearing behind’ a reference refers to the process of filing an affidavit or declaration under 37 CFR 1.131(a) to overcome a rejection in certain patent applications. This process allows an applicant or patent owner to establish a date of completion of the invention prior to the effective date of a reference used in a rejection.…

Read More

What is an affidavit or declaration under 37 CFR 1.132?

An affidavit or declaration under 37 CFR 1.132 is a form of evidence submitted to traverse rejections or objections in a patent application or reexamination. The MPEP states: When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a…

Read More

What are the requirements for a proper obviousness-type double patenting rejection?

What are the requirements for a proper obviousness-type double patenting rejection? An obviousness-type double patenting (OTDP) rejection is used to prevent the unjustified extension of patent rights. The MPEP outlines the requirements for a proper OTDP rejection: A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one…

Read More