How does the USPTO handle utility rejections for inventions with “throwaway” utilities?
The USPTO addresses “throwaway” utilities in patent applications as part of its examination process. According to MPEP 2107.01: “Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could…
Read MoreHow should patent examiners review responses to utility rejections?
When reviewing responses to utility rejections, patent examiners are instructed to conduct a comprehensive evaluation. The MPEP provides specific guidance: “If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or…
Read MoreHow does the USPTO handle rejections based on lack of utility?
The USPTO has specific procedures for handling rejections based on lack of utility. As indicated in MPEP 716.08: “See MPEP § 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack…
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