What effect do inoperative features have on a patent’s validity as prior art?
Inoperative features in a patent do not necessarily invalidate its use as prior art. MPEP 716.07 clarifies this point: ‘Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative.’ This means that even if certain…
Read MoreWhat is the presumption of operability in patent law?
The presumption of operability is a legal concept in patent law that assumes every patent is valid and operable. This is based on 35 U.S.C. 282, which states that patents are presumed valid. The MPEP section 716.07 elaborates on this, stating: ‘Since every patent is presumed valid (35 U.S.C. 282), and since that presumption includes…
Read MoreWhat is the significance of 35 U.S.C. 301 in citing prior art?
What is the significance of 35 U.S.C. 301 in citing prior art? 35 U.S.C. 301 plays a crucial role in the citation of prior art for patents. According to MPEP 707.05: ‘Availability of newly discovered references should be reported to the examiner even though the application is allowed or in issue.’ This statute allows any…
Read MoreWhat happens if a prior-filed application lacks adequate written description for a claimed invention?
If a prior-filed application lacks adequate written description for a claimed invention, the following consequences may occur: The claim in the later-filed application will not be entitled to the benefit of the filing date of the prior-filed application for that invention. The effective filing date for the claimed invention will be the filing date of…
Read MoreWhat are the consequences of failing to comply with the inventor’s oath or declaration requirements?
Failing to comply with the inventor’s oath or declaration requirements can have serious consequences for a patent application or an issued patent. However, the America Invents Act (AIA) introduced some provisions to mitigate these consequences. According to 35 U.S.C. 115(h)(3): A patent shall not be invalid or unenforceable based upon the failure to comply with…
Read MoreWhat are the consequences of not filing an IDS or submitting an incomplete IDS?
What are the consequences of not filing an IDS or submitting an incomplete IDS? Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences: Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct. Patent Invalidity: The patent may be held unenforceable if…
Read MoreHow long is a provisional patent application valid?
A provisional patent application has a limited lifespan. According to MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5).” However, there is a provision for extending this period in certain circumstances:…
Read MoreWhat are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?
Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences. MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request: The new inventor…
Read MoreWhat is voluntary arbitration in patent disputes?
Voluntary arbitration in patent disputes is a process outlined in 35 U.S.C. 294 where parties can agree to settle disputes related to patent validity or infringement through arbitration. The law states: ‘A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity…
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