In what situations are the provisions of 37 CFR 1.130 available in patent applications?
According to MPEP 717.01(d), the provisions of 37 CFR 1.130 are available in the following situations: When the rejection is based on a disclosure other than a U.S. patent or U.S. patent application publication, such as non-patent literature or a foreign patent document. When the rejection is based on a U.S. patent or U.S. patent…
Read MoreWhat is ‘swearing behind’ a reference?
‘Swearing behind’ a reference refers to the process of filing an affidavit or declaration under 37 CFR 1.131(a) to overcome a rejection in certain patent applications. This process allows an applicant or patent owner to establish a date of completion of the invention prior to the effective date of a reference used in a rejection.…
Read MoreHow does the USPTO handle prior art rejections when the reference names a different inventive entity with at least one common inventor?
When the USPTO handles prior art rejections where the reference names a different inventive entity with at least one common inventor, the following process is typically followed: The examiner will treat the reference as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g). The applicant can overcome this rejection by filing an affidavit or…
Read MoreHow does the USPTO define ‘prior art’ for patent examination?
How does the USPTO define ‘prior art’ for patent examination? The USPTO defines ‘prior art’ as any evidence that the invention in question was already known before the effective filing date of the patent application. According to MPEP 706.02, prior art includes: Patents and printed publications Public use or sale Other public disclosures The MPEP…
Read MoreHow does the USPTO handle prior art references with both operable and inoperable features?
How does the USPTO handle prior art references with both operable and inoperable features? The USPTO has a specific approach to handling prior art references that contain both operable and inoperable features. According to MPEP 716.07: “Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the…
Read MoreHow does the USPTO handle prior art submitted by applicants?
The USPTO has specific procedures for handling prior art submitted by applicants. According to MPEP 707.05(b), “Prior art submitted by applicant in the manner provided in MPEP ยง 609 will not be supplied with an Office action.” This means that while the examiner will consider the submitted prior art during the examination process, they will…
Read MoreCan a 37 CFR 1.130(a) declaration be used to overcome a 35 U.S.C. 102(a)(2) rejection?
Can a 37 CFR 1.130(a) declaration be used to overcome a 35 U.S.C. 102(a)(2) rejection? Yes, a declaration under 37 CFR 1.130(a) can be used to overcome a rejection under 35 U.S.C. 102(a)(2). The MPEP 717.01(a) provides guidance on this matter: “37 CFR 1.130(a) provides a mechanism for filing an affidavit or declaration to establish…
Read MoreWhat constitutes ‘unexpected results’ in patent law?
‘Unexpected results’ in patent law refer to properties or outcomes of an invention that are surprising or unanticipated based on the prior art. The MPEP states: Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such…
Read MoreWhat types of information can an examiner request about prior art?
What types of information can an examiner request about prior art? An examiner can request various types of information about prior art, including: Copies of patents, publications, or other information about prior art cited in the application but not submitted in compliant form Names of persons involved in developing the subject matter of the claims…
Read MoreWhat types of information can an examiner require under MPEP 704.10?
What types of information can an examiner require under MPEP 704.10? Under MPEP 704.10, an examiner can require various types of information from an applicant. These include: Technical information known to the applicant concerning the invention Commercial information regarding the invention or its development Prior art that may be material to patentability Factual information about…
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