What is the CREATE Act and how does it affect patent applications?
The Cooperative Research and Technology Enhancement (CREATE) Act, enacted in 2004, amended pre-AIA 35 U.S.C. 103(c) to allow disqualification of certain prior art in obviousness rejections if the claimed invention resulted from a joint research agreement. It affects how prior art is treated in certain situations involving collaborations between different entities. The MPEP explains: The…
Read MoreCan an examiner make a new rejection after a common ownership statement disqualifies prior art?
Can an examiner make a new rejection after a common ownership statement disqualifies prior art? Yes, an examiner can make a new rejection even after a common ownership statement disqualifies previously cited prior art. The MPEP 717.02(c) provides guidance on this situation: “If the rejection is obviated and the claims are otherwise allowable, the examiner…
Read MoreHow does the USPTO evaluate declarations under 37 CFR 1.130(b)?
The United States Patent and Trademark Office (USPTO) evaluates declarations under 37 CFR 1.130(b) based on specific criteria outlined in MPEP 717.01(b)(1). The evaluation process includes: Timeliness: The declaration must be filed within the time periods set in 37 CFR 1.130(b). Completeness: The declaration must contain all required information and statements. Corroboration: The USPTO assesses…
Read MoreHow does 37 CFR 1.130(b) apply to species and genus disclosures?
The application of 37 CFR 1.130(b) to species and genus disclosures depends on the relationship between the inventor’s prior disclosure and the intervening disclosure. The MPEP provides guidance on different scenarios: Genus disclosure after species disclosure: If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S.…
Read MoreWhat are the requirements for disqualifying a patent or patent application publication under 37 CFR 1.131(c)?
To disqualify a U.S. patent or U.S. patent application publication as prior art under 37 CFR 1.131(c), the applicant or patent owner must submit two items: A terminal disclaimer: This must be in accordance with 37 CFR 1.321(c). An oath or declaration: This must state that: The application or patent under reexamination and the patent…
Read MoreWhat are the requirements for a 37 CFR 1.130(a) declaration of attribution?
A 37 CFR 1.130(a) declaration of attribution must meet specific requirements to effectively disqualify a disclosure as prior art. According to MPEP 717.01(a): The applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint…
Read MoreCan a partial disclosure be disqualified under 37 CFR 1.130(b)?
Yes, it is possible to disqualify only a portion of an intervening disclosure under 37 CFR 1.130(b). The MPEP provides clear guidance on this matter: Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a).…
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