What is the relationship between conception and diligence in patent law?
In patent law, there is a crucial relationship between conception and diligence. According to the MPEP, Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that the inventor or inventors had been diligent. Rather, applicant must show evidence of facts establishing…
Read MoreHow does common ownership affect rejections under pre-AIA 35 U.S.C. 102(e)/103?
Common ownership can have a significant impact on rejections under pre-AIA 35 U.S.C. 102(e)/103. According to MPEP 715.01(b): Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing…
Read MoreWhat are the most common grounds for rejection in patent applications?
The most frequent grounds for rejection in patent applications are based on prior art. As stated in the MPEP, By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or…
Read MoreHow should examiners handle the citation of references in Office actions?
How should examiners handle the citation of references in Office actions? Examiners must follow specific guidelines when citing references in Office actions: Each reference cited should be relevant to the examination and support any rejections or objections made. Citations must include all bibliographic information necessary for clear identification of the source. For U.S. patents and…
Read MoreWhat circumstances can lead to the rejection of a previously allowed patent claim?
The rejection of a previously allowed patent claim is an unusual occurrence that typically happens under specific circumstances. According to MPEP 706.04, the main reason for such a rejection is the discovery of new prior art. This is evident from the language used in Form Paragraph 7.50: “The indicated allowability of claim [1] is withdrawn…
Read MoreCan an applicant’s own activities be used against their patent claims?
Yes, an applicant’s own activities can be used against their patent claims. MPEP 715.01(d) clearly states: ‘The rejection may be based on activities by the inventor(s) or a different inventive entity.’ This means that even the applicant’s own public disclosures, sales, or other activities that occurred before the effective filing date of the claimed invention…
Read MoreWhat is the difference between anticipation and obviousness in patent rejections?
What is the difference between anticipation and obviousness in patent rejections? Anticipation and obviousness are two distinct grounds for rejecting a patent application based on prior art: Anticipation (35 U.S.C. 102): This occurs when a single prior art reference discloses all elements of the claimed invention. As stated in MPEP 2131, “A claim is anticipated…
Read MoreWhen is a 37 CFR 1.131(a) affidavit appropriate in a patent application?
A 37 CFR 1.131(a) affidavit is appropriate when an applicant needs to antedate a reference cited against their patent application. Specifically, it’s used to show prior invention before the effective date of the cited reference. According to MPEP 715.01: “An affidavit or declaration under 37 CFR 1.131(a) may be used, in the context of a…
Read MoreWhen can a requirement for information be made during patent examination?
A requirement for information under 37 CFR 1.105 can be made at various stages of the patent examination process. According to MPEP 704.11(b): “A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest…
Read MoreWhen is a declaration under 37 CFR 1.130(b) not available?
A declaration under 37 CFR 1.130(b) is not available in certain situations. The MPEP outlines two specific cases: If the disclosure was made more than one year before the effective filing date of the claimed invention. When the disclosure applied in a rejection is a U.S. patent or U.S. patent application publication that claims an…
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