How does the USPTO determine if a prior art reference is enabling for a claimed compound?
The USPTO determines if a prior art reference is enabling for a claimed compound by considering several factors: The level of specificity in the prior art’s disclosure of the compound The presence of working examples or detailed synthetic procedures The predictability of the art The knowledge of a person of ordinary skill in the art…
Read MoreWhat is the “markedly different characteristics” analysis in patent examination?
The “markedly different characteristics” analysis is a key part of determining the patent eligibility of nature-based products. According to the MPEP Section 2106.04(b): “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to…
Read MoreHow does the USPTO handle unity of invention in national stage applications?
The USPTO handles unity of invention in national stage applications by following the guidelines set forth in MPEP 1893.03(d). Key points include: Examiners apply the unity of invention standard for PCT applications in the national stage. The unity of invention determination is made without regard to whether a group of inventions is claimed in separate…
Read MoreHow does the USPTO handle provisional double patenting rejections?
The USPTO handles provisional double patenting rejections as follows: Examiners make a complete examination of claims in each application filed by the same applicant or assignee. If patentably indistinct claims are found, appropriate rejections are entered in each application. Claims may be rejected on the grounds of provisional double patenting based on the claims of…
Read MoreHow does the USPTO handle judicial determinations of fraud or inequitable conduct in reissue applications?
For reissue applications filed before September 16, 2012, the USPTO takes judicial determinations of fraud or inequitable conduct seriously. According to MPEP 1448: “Form paragraph 14.21.09.fti should be used for applications filed before September 16, 2012, where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of…
Read MoreHow does the USPTO handle fraud, inequitable conduct, or duty of disclosure issues in reissue applications?
The USPTO does not investigate or reject reissue applications under 37 CFR 1.56. As stated in MPEP 1448: “The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer…
Read MoreHow does the USPTO handle admissions of fraud or inequitable conduct in reissue applications?
For reissue applications filed before September 16, 2012, the USPTO handles admissions of fraud or inequitable conduct carefully. According to MPEP 1448: “Where a rejection is made based upon such an admission (see form paragraph 14.22.fti below) and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of…
Read MoreHow does the USPTO examine design patent applications for computer-generated icons?
The USPTO follows specific procedures when examining design patent applications for computer-generated icons to ensure compliance with the “article of manufacture” requirement of 35 U.S.C. 171. The MPEP outlines these procedures: Review the entire disclosure to determine what the applicant claims as the design and whether it’s embodied in an article of manufacture. Examine the…
Read MoreHow does the USPTO determine if reissue claims are for the same general invention?
The USPTO determines if reissue claims are for the same general invention by examining whether the claims are supported by the original patent disclosure. According to MPEP 1412.01: The original patent specification, drawings, and claim set must adequately support and describe the claims of the reissue application. The examiner will review the reissue claims in…
Read MoreHow does the USPTO determine if a reissue claim is broadening?
How does the USPTO determine if a reissue claim is broadening? The USPTO determines if a reissue claim is broadening by comparing it to the claims of the original patent. According to MPEP 1412.03: “A claim is broadened if it is broader in any respect than the original patent claims, even though it may be…
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