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 MoreWhat are the most common grounds for rejection in patent applications?
The most frequent grounds for rejection in patent applications are based on prior art. As stated in the MPEP, By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or…
Read MoreWhat 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 MoreWhat 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 MoreWhat 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 MoreWhat 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 MoreWhat is a statutory bar in the context of MPEP 715.01(d)?
While MPEP 715.01(d) doesn’t explicitly define a statutory bar, it mentions it as an exception to when certain rejections can be overcome. The section states: “Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to…
Read MoreWhat 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 MoreCan a patent application be rejected after it has been allowed?
Yes, a patent application can be rejected after it has been allowed. According to MPEP 706.05, rejection after allowance is possible. The section states: “See MPEP § 1308.01 for a rejection based on a reference after allowance.” This means that even after an application has been allowed, new information or references may come to light…
Read MoreHow should patent examiners phrase rejections based on prior art?
When rejecting claims based on prior art, patent examiners should use clear and definitive language. The MPEP states, The language to be used in rejecting claims should be unequivocal. This guidance emphasizes the importance of clarity in rejections to ensure that applicants fully understand the basis for the rejection and can respond effectively. For more…
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