What happens if the USPTO fails to issue a determination on a supplemental examination request within 3 months?
According to MPEP 2816, if the USPTO fails to issue a determination on a supplemental examination request within 3 months, the following occurs: “If the Office does not issue a determination on the request within 3 months, supplemental examination is deemed to be concluded.” This means that even if the USPTO doesn’t respond within the…
Read MoreHow does the USPTO determine if a disclosure is by the inventor or a joint inventor?
The USPTO determines if a disclosure is by the inventor or a joint inventor by examining the evidence provided and the circumstances of the disclosure. According to MPEP 2155.02: “The Office is not required to evaluate the sufficiency of the declaration or affidavit beyond ensuring that the declaration or affidavit addresses the subject matter of…
Read MoreHow does the USPTO determine if a disclosure is an inventor-originated disclosure?
The USPTO determines if a disclosure is an inventor-originated disclosure through a case-by-case analysis. According to the MPEP: “What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated…
Read MoreHow does the USPTO explain the basis for each determination in supplemental examination?
The USPTO explains the basis for each determination in supplemental examination by providing a clear rationale for the findings. According to MPEP 2816.03: “The determination should explain the basis for the determination of each issue with respect to each item of information. For example, the determination should explain why each item of information does or…
Read MoreHow does the USPTO determine if an art is predictable or unpredictable?
The USPTO determines whether an art is predictable or unpredictable based on the ability of a skilled artisan to anticipate the effects of changes within the subject matter. According to MPEP 2164.03: “If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention…
Read MoreHow does the USPTO determine if a biological material is “known and readily available”?
How does the USPTO determine if a biological material is “known and readily available”? The USPTO considers several factors to determine if a biological material is “known and readily available,” which may negate the need for a deposit. According to MPEP 2404: “The Office will accept commercial availability as evidence that a biological material is…
Read MoreWhat happens if no substantial new question of patentability is found in a supplemental examination?
If the USPTO determines that no substantial new question of patentability (SNQ) is raised by the items of information in a supplemental examination request, the following occurs: The Office will issue a supplemental examination certificate stating that no SNQ is raised. No ex parte reexamination will be ordered. The supplemental examination proceeding will be concluded.…
Read MoreHow does the USPTO determine if a delay in filing a reissue application was unintentional?
How does the USPTO determine if a delay in filing a reissue application was unintentional? The USPTO evaluates the unintentional nature of delays in filing reissue applications on a case-by-case basis. According to MPEP 1403: “In determining whether a delay in filing a reissue application was unintentional, the examiner should make an inquiry as to…
Read MoreHow does the USPTO determine if inventions are “independent and distinct” for restriction purposes?
The concept of “independent and distinct” inventions is crucial for restriction practice, as mentioned in 35 U.S.C. 121. However, the MPEP section provided does not give specific criteria for this determination. Generally, the USPTO considers inventions to be independent when there is no disclosed relationship between them, and distinct when they have a materially different…
Read MoreHow does the USPTO determine if a combination does not require the particulars of the subcombination?
How does the USPTO determine if a combination does not require the particulars of the subcombination? The USPTO determines if a combination does not require the particulars of the subcombination by examining whether the combination’s patentability is independent of the specific details of the subcombination. MPEP 806.05(a) states: “The combination as claimed does not require…
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