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 types of information can the USPTO require under 37 CFR 1.105?
The USPTO can require a wide range of information under 37 CFR 1.105. According to MPEP 704.10, this may include: Commercial databases relevant to the invention Search history of prior art Related non-patent literature, published applications, or patents Information used to draft the application Information used in the invention process Identification of improvements Known uses…
Read MoreWhere can I find information on rejections based on pre-AIA 35 U.S.C. 102?
For information specific to rejections based on pre-AIA 35 U.S.C. 102, you should refer to MPEP §§ 2132 – 2139.03. These sections provide comprehensive guidance on how to apply the various subsections of pre-AIA 35 U.S.C. 102 in patent examination. It’s important to note that pre-AIA 35 U.S.C. 102 applies to patent applications filed before…
Read MoreWhat are the guidelines for submitting prior art to the USPTO?
The guidelines for submitting prior art to the U.S. Patent and Trademark Office (USPTO) are outlined in MPEP § 609. These guidelines are for applicants, their attorneys, and agents who wish to submit prior art for consideration. According to MPEP 707.05(b), “Submitted citations will not in any way diminish the obligation of examiners to conduct…
Read MoreWhat is the practice for genus-species cases where predictability is in question?
In cases where predictability is in question, the practice for genus-species cases is more stringent. As stated in MPEP 715.03: “In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or…
Read MoreWhat factors are considered for making a requirement for information prior to the first action on the merits?
According to MPEP 704.11(b), several factors are considered when determining the appropriateness of a separate requirement for information prior to the first action on the merits. These include: Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool Whether the applicant submitted an Information Disclosure Statement…
Read MoreCan an examiner require information about prior art cited in an information disclosure statement (IDS)?
Can an examiner require information about prior art cited in an information disclosure statement (IDS)? Yes, an examiner can require information about prior art cited in an information disclosure statement (IDS). The MPEP 704.10 provides specific guidance on this matter: Information reasonably necessary for finding prior art may include explanations of how the inventive features…
Read MoreHow does the effective filing date affect prior art rejections?
How does the effective filing date affect prior art rejections? The effective filing date of a claimed invention is crucial in determining what qualifies as prior art for rejections. According to MPEP 2152: “The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. It is possible…
Read MoreWhat is the significance of the effective filing date in patent examination?
The effective filing date is crucial in patent examination as it determines which prior art can be used against the claims. MPEP 715.01(d) states: ‘The 1-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from the filing date to which the application is entitled (United States filing date or foreign priority date) with respect…
Read MoreHow is the effective date of a printed publication determined for 37 CFR 1.131(a) purposes?
For the purposes of 37 CFR 1.131(a) affidavits or declarations, the effective date of a printed publication is its publication date, not the date it was received by the publisher. The MPEP states: A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by…
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