What types of evidence can be used in a 37 CFR 1.130(a) declaration?
Various types of evidence can be used in a 37 CFR 1.130(a) declaration to establish that a disclosure was made by the inventor or obtained from them. While the MPEP 717.01(a)(1) doesn’t provide an exhaustive list, common types of evidence may include: Emails or correspondence between the inventor and third parties Laboratory notebooks or research…
Read MoreWhat should be discussed in an interview prior to first official action in patent examination?
An interview prior to first official action in patent examination can cover several important topics. According to MPEP 713.02, the following subjects may be discussed: The invention and its relation to the prior art Potential rejections or objections that may arise Possible amendments to define the invention over the prior art Any other matters that…
Read MoreWhat time period is covered by 37 CFR 1.130(a) declarations?
Declarations or affidavits under 37 CFR 1.130(a) cover disclosures made within one year or less before the effective filing date of the claimed invention. This is known as the grace period. The MPEP states: 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention…
Read MoreCan a 37 CFR 1.130(a) declaration be used for disclosures made more than one year before the effective filing date?
No, a 37 CFR 1.130(a) declaration cannot be used for disclosures made more than one year before the effective filing date of the claimed invention. MPEP 717.01(a) clearly states: The provisions of 37 CFR 1.130(a) are not available if the rejection is based upon a disclosure made more than one year before the effective filing…
Read MoreWhat types of technical information can an examiner request during patent examination?
An examiner can request various types of technical information during patent examination, as outlined in MPEP 704.11(a). Some examples include: Technical explanations of the invention Details of how the invention is made or used Specific utilities of the invention Best mode of carrying out the invention Copies of any non-patent literature relied upon The MPEP…
Read MoreHow do Statutory Invention Registrations (SIRs) affect patent claims?
Statutory Invention Registrations (SIRs) can have an impact on patent claims, as mentioned in MPEP 715.01(d). Here’s what you need to know: SIRs are listed among the activities that can be used against claims in a patent application. They can serve as prior art in the examination process. SIRs may be cited to reject claims…
Read MoreWhat is the significance of ‘same invention’ in MPEP 715.01(a)?
The concept of ‘same invention’ in MPEP 715.01(a) is crucial for understanding when a prior art reference can be disqualified. The MPEP states: ‘If the rejection is based on a U.S. patent or U.S. patent application publication of a different inventive entity which claims the same invention or an obvious variant, and there is at…
Read MoreWhat is the significance of enablement in prior art references?
What is the significance of enablement in prior art references? Enablement is a crucial concept in evaluating prior art references during patent examination. The MPEP 716.07 provides important guidance on this matter: “The operability and utility of the prior art is presumed. However, once substantial evidence is presented rebutting this presumption, the examiner should reconsider…
Read MoreWhat is the significance of the phrase ‘applied against the claims’ in MPEP 715.01(d)?
The phrase ‘applied against the claims’ in MPEP 715.01(d) is significant because it indicates that the activities or prior art being discussed are those that are actually being used to reject or challenge the patent claims. This section specifically states: The activities applied against the claims are those relied on in the rejection. This means…
Read MoreWhat does ‘same subject matter’ mean in the context of 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) exceptions?
The concept of ‘same subject matter’ is crucial in applying the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B). According to the MPEP: “The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure.”…
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