Can prior art considered during the original patent examination be used again in a reissue application?
Yes, prior art that was considered during the original patent examination can be used again in a reissue application. The MPEP 1445 clearly states: “Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not…
Read MoreWhat is considered prior art for international preliminary examination?
According to MPEP 1878.01(a), prior art for international preliminary examination is defined in PCT Rule 64.1(a) as: “everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) … provided that such making available occurred prior to the relevant date.“ The relevant date is typically the…
Read MoreWhat constitutes prior art for international patent searches?
According to MPEP 1843.01, prior art for international patent searches consists of: Everything made available to the public worldwide by written disclosure (including drawings and illustrations) Content capable of assisting in determining if the claimed invention is new or involves an inventive step Disclosures made available to the public prior to the international filing date…
Read MoreWhat is considered prior art for international patent applications?
According to MPEP 1878.01(a), prior art for international patent applications is defined in PCT Rule 64.1(a) as: “everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) … provided that such making available occurred prior to the relevant date.” The ‘relevant date’ is generally the…
Read MoreWhat happens if the examiner finds prior art that reads on the elected species in a Markush claim?
What happens if the examiner finds prior art that reads on the elected species in a Markush claim? If the examiner finds prior art that reads on the elected species in a Markush claim, the following actions are taken: The Markush claim is rejected The examination is limited to the elected species Other species are…
Read MoreWhat is the role of prior art in design patent nonobviousness determinations?
What is the role of prior art in design patent nonobviousness determinations? Prior art plays a crucial role in determining nonobviousness for design patents. According to MPEP 1504.03: “The obviousness inquiry is conducted from the perspective of the ordinary designer. In order to support a rejection on this basis, the examiner must make factual findings…
Read MoreWhat is the definition of “prior art” in patent law?
The term “prior art” in patent law refers to all information that has been made available to the public before a given date that might be relevant to a patent’s claims of originality. This includes existing patents, published patent applications, and other publicly available documents or information. While the MPEP 901 doesn’t provide a direct…
Read MoreHow does the availability of prior art differ between original and reissue applications?
In most cases, the availability of prior art for reissue applications is the same as for original applications. However, the MPEP 1445 notes that there can be rare exceptions: “Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the…
Read MoreWhat are the primary search tools available to patent examiners?
The primary search tools available to patent examiners include: The Cooperative Patent Classification (CPC) system The United States Patent Classification (USPC) system Various automated search tools and databases According to MPEP 902, “The primary classification and search tools used by the USPTO are the Cooperative Patent Classification (CPC) system, the United States Patent Classification (USPC)…
Read MoreWhat is the significance of the “primary reference” in design patent obviousness rejections?
The concept of a “primary reference” is crucial in design patent obviousness rejections. The MPEP explains: “In order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design.“ Key aspects of the primary reference in design patent…
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