Who has a duty to disclose information material to patentability?
According to 37 CFR 1.56, individuals associated with the filing and prosecution of a patent application have a duty to disclose information material to patentability. This includes: The inventor(s) Each attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution of the application The…
Read MoreWhen should an interference be suggested during patent examination?
An interference should rarely be suggested until examination is completed on all other issues. According to MPEP 2303, “Each pending claim must be allowed, finally rejected, or canceled. Any appeal from a final rejection must be completed, including any judicial review. Any petition must be decided.” This means that examiners should resolve all other patentability…
Read MoreWhat is a protest under 37 CFR 1.291?
A protest under 37 CFR 1.291 is a mechanism that allows members of the public to bring information to the attention of the USPTO regarding pending patent applications. The MPEP states: 37 CFR 1.291 gives recognition to the value of written protests in bringing information to the attention of the Office and in avoiding the…
Read MoreWhat is considered “information material to patentability”?
Information material to patentability refers to any information that is relevant to the patentability of an invention. This includes prior art, conflicting applications, and any other information that could affect the novelty, non-obviousness, or utility of the claimed invention. According to 37 CFR 1.56, information is material to patentability when: It establishes, by itself or…
Read MoreHow does the USPTO handle cumulative information in supplemental examination?
The USPTO’s handling of cumulative information in supplemental examination is addressed in MPEP 2816.02. Key points include: Cumulative information generally does not raise a substantial new question of patentability (SNQ) Information is cumulative when it teaches no more than what was previously known from cited prior art in the record However, a combination of references…
Read MoreHow does the MPEP distinguish between different types of reexamination requests?
The MPEP distinguishes between different types of reexamination requests based on the requester’s intent and the claims made. Two main types are discussed: Requests indicating claims are unpatentable over the art: “The example in MPEP § 2247.01 is drafted for the case where the ‘request indicates that Requester considers that Claims 1-2 are unpatentable over…
Read MoreWhat types of prior art are considered under AIA 35 U.S.C. 102(a)(1)?
AIA 35 U.S.C. 102(a)(1) considers the following types of prior art: Prior patenting of the claimed invention Descriptions of the claimed invention in a printed publication Public use of the claimed invention Placing the claimed invention on sale Otherwise making the claimed invention available to the public As stated in the MPEP: “Prior art documents…
Read MoreWhat types of information can be included in a protest under 37 CFR 1.291?
A protest under 37 CFR 1.291 can include various types of information that may make the grant of a patent improper. The MPEP states: “Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest under 37 CFR 1.291.” While prior art documents like…
Read MoreWhat is the difference between structural elements and material worked upon in patent claims?
In patent claims, particularly apparatus claims, it’s crucial to distinguish between structural elements and material worked upon. MPEP 2115 provides guidance on this distinction: Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Structural elements are the physical components that make up the claimed apparatus. These are the positively recited…
Read MoreWhat is the significance of the statutory bar under pre-AIA 35 U.S.C. 102(b)?
The statutory bar under pre-AIA 35 U.S.C. 102(b) is a critical concept in patent law that can prevent an inventor from obtaining a patent. According to MPEP 2133.02: “A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that…
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