How should examiners approach product-by-process claims?
Examiners should approach product-by-process claims by focusing on the product itself, rather than the process of making it. MPEP 904.01 provides guidance: Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Key points for examiners to consider: The patentability of a product does not depend…
Read MoreWhat is an appeal conference in patent examination?
An appeal conference is a mandatory process in patent examination when an acceptable brief has been filed. According to MPEP 1207.01, An appeal conference is mandatory in all cases in which an acceptable brief ( MPEP § 1205 ) has been filed. The purpose of this conference is to review the merits of the issues…
Read MoreWhat changes were made to the reissue process by the America Invents Act?
The America Invents Act (AIA) made a significant change to the reissue process. As stated in the MPEP: “Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 251 to eliminate the ‘without deceptive intention’ clause.” This change means that for reissue applications filed on…
Read MoreWhat changes did the America Invents Act (AIA) bring to the patent appeal process?
The America Invents Act (AIA) introduced significant changes to the patent appeal process. MPEP 1201 notes: “Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced…
Read MoreWhat should I do if the title of my invention is not specific to the claimed invention?
If the title of your invention is not specific to the claimed invention, you should refer to MPEP § 606.01 for guidance. The MPEP § 1302.04(a) directs patent examiners and applicants to this section: “Where the title of the invention is not specific to the invention as claimed, see MPEP § 606.01.” MPEP § 606.01…
Read MoreWhat is the significance of an allowable linking claim in a transitional application?
An allowable linking claim in a transitional application has significant implications for the application process, as outlined in MPEP 803.03(a). The key significance is: “Whenever divided inventions in a transitional application are rejoined because a linking claim is allowable ( MPEP § 809 , § 821.04 , and § 821.04(a) ) …” This statement indicates…
Read MoreWhat should applicants do if their pre-July 1, 2009 Article 19 Amendments were not entered correctly?
If an applicant’s pre-July 1, 2009 Article 19 Amendments were not entered correctly in the U.S. national stage application, the USPTO recommends submitting a preliminary amendment. According to MPEP 1893.01(a)(2): “In such situations, applicants are encouraged to submit a preliminary amendment in accordance with 37 CFR 1.121 to obtain entry of the desired changes.” This…
Read MoreHow can the public access and view reissue application files?
The public can access and view reissue application files through the USPTO’s Patent Center. MPEP 1470 provides the following information: “IFW reissue application files are open to inspection by the general public by way of Patent Center via the USPTO Internet site. In viewing the images of the files, members of the public will be…
Read MoreHow can the public access reissue application files?
The public can access reissue application files through the USPTO’s Patent Center. MPEP 1430 states: “IFW reissue application files are open to inspection by the general public by way of Patent Center via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the entire…
Read MoreCan a petition be accepted after the two-month filing period?
While the general rule is that petitions should be filed within two months, the USPTO does have discretion to accept late-filed petitions. According to the MPEP: “37 CFR 1.181(f) authorizes deciding officials to reasonably exercise discretion to accept a petition filed more than 2 months after the date of the action or notice from which…
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