When is an Ex Parte Reexamination Certificate issued?
An Ex Parte Reexamination Certificate is issued at the conclusion of an ex parte reexamination proceeding. According to MPEP 2288, the certificate is issued: “when the time for appeal has expired or any appeal proceeding has terminated” This means the certificate is issued after all opportunities for challenging the results of the reexamination have been…
Read MoreWhen is a deposit of biological material not necessary for patent applications?
A deposit of biological material is not necessary for patent applications when the required biological materials can be made or isolated without undue experimentation. This is explicitly stated in MPEP 2404.02: “Applicant may show that a deposit is not necessary even though specific biological materials are required to practice the invention if those biological materials…
Read MoreWhen do intervening rights apply to reinstated patents?
Intervening rights apply to reinstated patents during a specific time frame. According to MPEP § 2591, these rights are applicable to actions taken: After the 6-month grace period for paying the maintenance fee But prior to the acceptance of the late maintenance fee The MPEP states: “A court before which such matter is in question…
Read MoreWhen can a patent owner file a request for supplemental examination?
A patent owner can file a request for supplemental examination at any time during the period of enforceability of the patent. This is specified in 37 CFR 1.601(c), which states: “A request for supplemental examination of a patent may be filed at any time during the period of enforceability of the patent.” This rule was…
Read MoreWhen can prior art or Section 301 written statements be filed for a patent?
Prior art or Section 301 written statements can be filed “at any time during the period of enforceability of a patent.” As stated in MPEP 2204: “Submissions may be filed ‘at any time’ under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be ‘any time during the period…
Read MoreWhen does experimental use end in patent law?
Experimental use ends when the invention is actually reduced to practice. The MPEP states: “Experimental use ‘means perfecting or completing an invention to the point of determining that it will work for its intended purpose.’ Therefore, experimental use ‘ends with an actual reduction to practice.’” (MPEP 2133.03(e)(3)) Once the inventor is satisfied that the invention…
Read MoreWhen does experimental use of an invention end?
Experimental use of an invention ends when the invention is actually reduced to practice. According to the MPEP, Experimental use “means perfecting or completing an invention to the point of determining that it will work for its intended purpose.” Therefore, experimental use “ends with an actual reduction to practice.” (MPEP 2133.03(e)(3)) This means that once…
Read MoreWhen should material information be disclosed in patent term extension proceedings?
Material information should be disclosed promptly in patent term extension proceedings. The MPEP 2762 provides clear guidance on the timing: “All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension…
Read MoreWhen should an applicant disclose information about copied claims?
An applicant should disclose information about copied claims at a specific time during the patent application process. The MPEP 2001.06(d) states: “37 CFR 41.202(a) requires the applicant, at the time he or she presents the claim(s), to identify the patent and the numbers of the patent claims.” This means that the disclosure should be made…
Read MoreWhen is claim sorting not appropriate in patent applications?
Claim sorting may not be appropriate in all cases, particularly when it could lead to issues with claim support. The MPEP 2304.01(d) provides guidance on this matter: “Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35…
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