When 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…
Read MoreWhen can I change the correspondence address during the patent application process?
The timing for changing the correspondence address depends on the stage of the patent application process: Before filing an oath or declaration: You can change the address as provided in pre-AIA 37 CFR 1.33(a)(1). After filing an oath or declaration: The address can be changed as per pre-AIA 37 CFR 1.33(a)(2). The MPEP states: “The…
Read MoreWhen can a protest be filed in a patent application?
According to MPEP 1901, protests must be filed within specific time frames: With the exception of a protest accompanied by a written consent of the applicant, all protests must be submitted prior to the publication of the application or the date a notice of allowance is given or mailed, whichever occurs first. Additionally, for reissue…
Read MoreWhen can a power of attorney be revoked or an attorney withdraw from a patent case?
According to MPEP 2560, “The revocation or withdrawal of an attorney may be submitted at any time.” However, it’s important to note that “a revocation or withdrawal of an attorney filed after issuance of a patent is not normally processed.” This means that while you can technically submit a revocation or withdrawal at any point,…
Read MoreWhen can a patent examiner reject claims as prolix?
A patent examiner can reject claims as prolix under specific circumstances outlined in MPEP 2173.05(m). The manual states: “Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.” Additionally, claims may be rejected as prolix “when they contain…
Read MoreWhen can an examiner take official notice without documentary evidence?
An examiner can take official notice without documentary evidence in certain circumstances where the facts are considered well-known or common knowledge in the art. According to MPEP 2144.03, this is permissible when the facts are “capable of instant and unquestionable demonstration as being well-known.” The MPEP states: “Official notice without documentary evidence to support an…
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