Can a product-by-process claim be anticipated by a prior art product made by a different process?
Yes, a product-by-process claim can be anticipated by a prior art product made by a different process. MPEP 2113 clearly states: “[B]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art…
Read MoreCan a patent be invalidated if the biological deposit becomes non-viable?
Can a patent be invalidated if the biological deposit becomes non-viable? While the MPEP does not explicitly state that a patent will be invalidated if a biological deposit becomes non-viable, it does emphasize the importance of maintaining viability. MPEP 2409 states: “Failure to maintain a deposit in a viable and uncontaminated condition may result in…
Read MoreWhat happens if no Substantial New Question of Patentability is raised?
If the supplemental examination certificate states that no Substantial New Question of Patentability (SNQ) is raised, no further action is taken. As stated in MPEP 2817: “If, however, the supplemental examination certificate states that no substantial new question of patentability is raised in the request, then an ex parte reexamination proceeding will not be initiated…
Read MoreCan a patent undergo multiple reexaminations?
Yes, a patent can undergo multiple reexaminations. This is evident from the concept of “reexamination of a reexamination” discussed in MPEP § 2695. The section states: “…a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is…
Read MoreWhat issues are not considered in inter partes reexamination?
Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered: Public use or on-sale activities Conduct issues Abandonment under pre-AIA 35 U.S.C. 102(c) Other issues not based on patents or printed publications The MPEP states: “If questions…
Read MoreHow does concurrent litigation affect inter partes reexamination proceedings?
Concurrent litigation can significantly impact inter partes reexamination proceedings. The key points to consider are: The USPTO is not bound by court decisions on patent validity and will generally continue reexamination proceedings unless statutorily required to terminate them. A final court decision of invalidity will typically result in termination of the reexamination for those claims…
Read MoreHow should information from related foreign patent applications be handled?
Information from related foreign patent applications, particularly prior art cited or used in rejecting claims, must be brought to the attention of the U.S. Patent and Trademark Office. The MPEP states: “Applicants and other individuals, as set forth in 37 CFR 1.56, have a duty to bring to the attention of the Office any material…
Read MoreWhat is the effect of a final court decision on an inter partes reexamination?
A final court decision can have significant effects on an inter partes reexamination: If a final court decision holds claims invalid, those claims will typically be withdrawn from the reexamination. If all claims being examined are held invalid, the reexamination may be terminated. A final court decision upholding validity may lead to termination of the…
Read MoreCan failure to disclose material information affect patent validity?
Yes, failure to disclose material information can significantly affect patent validity. If it is discovered that an applicant or their representative knowingly withheld material information during the patent application process, it could lead to charges of inequitable conduct and potentially render the patent unenforceable. While MPEP 2001.03 does not explicitly discuss the consequences of failing…
Read MoreWhat are the estoppel effects of inter partes reexamination?
What are the estoppel effects of inter partes reexamination? Inter partes reexamination has significant estoppel effects that can impact future proceedings. The MPEP explains: “A third party requester is estopped from later asserting in any civil action, or in a subsequent inter partes reexamination, the invalidity/unpatentability of any claim finally determined to be valid and…
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