What are the requirements for patent eligibility under 35 U.S.C. 101?
35 U.S.C. 101 sets forth the basic requirements for patent eligibility. According to MPEP 2103, there are four main requirements: Only one patent may be obtained for an invention Proper identification of inventors: For applications filed on or after September 16, 2012, inventors must be identified in the application For applications filed before September 16,…
Read MoreWhat are the four categories of inventions eligible for patent protection under 35 U.S.C. 101?
According to MPEP 2104, the four categories of inventions eligible for patent protection under 35 U.S.C. 101 are: Processes Machines Manufactures Compositions of matter The MPEP states: “35 U.S.C. 101 enumerates four categories of subject matter that Congress deemed to be appropriate subject matter for a patent: processes, machines, manufactures and compositions of matter.” These…
Read MoreCan animals be patented?
Yes, animals can be patented under certain circumstances. Following the reasoning in Diamond v. Chakrabarty, the Board of Patent Appeals and Interferences determined that animals are patentable subject matter under 35 U.S.C. 101. The MPEP states: “Shortly after the Allen decision, the Commissioner of Patents and Trademarks issued a notice (Animals – Patentability, 1077 O.G.…
Read MoreWhat are the key statutory requirements for plant patent applications?
Plant patent applications must meet several key statutory requirements, as outlined in MPEP § 1608. The manual states: As such, the statutory provisions with regard to patentable subject matter, utility, novelty, obviousness, disclosure, and claim specificity requirements apply (35 U.S.C. 101, 102, 103, and 112). These requirements include: Patentable Subject Matter: The plant must be…
Read MoreWhat should examiners do when they identify patentable subject matter that hasn’t been claimed?
When examiners identify patentable subject matter that hasn’t been claimed, they should take a constructive approach. The MPEP advises: “If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note…
Read MoreWhat is the definition of ‘process’ in patent law?
The term ‘process’ is defined in 35 U.S.C. 100(b) as follows: The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. This definition is broad and encompasses various types of procedures or methods. Importantly, it also includes new uses of known…
Read MoreWhat should patent examiners do when they find patentable subject matter in a pro se application?
When a patent examiner finds patentable subject matter in a pro se application (filed by an inventor without legal representation), they should take proactive steps to assist the applicant. According to MPEP 707.07(j): When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed…
Read MoreHow should examiners handle claims that are allowable except for formal issues?
When examining patent applications with claims that are intended to cover patentable subject matter but have formal defects, examiners should provide constructive feedback. The MPEP 707.07(j) states: When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable…
Read MoreWhat is the scope of a Secrecy Order?
A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the…
Read MoreWhen can a patent examiner suggest hiring a patent practitioner?
A patent examiner may suggest hiring a patent practitioner under specific circumstances, as outlined in MPEP 401: “If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant…
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