When can an examiner make a rejection based on prosecution laches?
An examiner should exercise caution when considering a rejection based on prosecution laches. According to MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.” This requirement ensures that such rejections are made only in egregious cases of unreasonable and unexplained delay in…
Read MoreWhen does the best mode requirement apply in patent applications?
The best mode requirement applies at the time of filing the patent application. It requires inventors to disclose the best way they know of carrying out their invention at that specific point in time. MPEP 2165.02 clarifies this timing: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor]…
Read MoreWhen is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhen is a 37 CFR 1.131 affidavit not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
A 37 CFR 1.131 affidavit is not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection in certain circumstances. According to the MPEP: “When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration…
Read MoreWhat qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)?
What qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)? A “printed publication” under 35 U.S.C. 102(a)(1) is not limited to traditional paper publications. According to MPEP 2152.02(b), it includes: Paper publications Electronic publications (including web pages) Presentations at scientific meetings Microfilm Computer programs Any other medium that provides information to the public The MPEP…
Read MoreWhat is the WIPO Sequence Validator?
The WIPO Sequence Validator is a tool developed by WIPO for use by Intellectual Property Offices (IPOs) to validate Standard ST.26 “Sequence Listing XML” files. As explained in MPEP 2418: To ensure that IPOs can validate and accept sequence listing projects from applicants generated with WIPO Sequence, WIPO is developing a Standard ST.26 “Sequence Listing…
Read MoreWhat is the WIPO Sequence Tool?
The WIPO Sequence Tool is a desktop application developed by WIPO and adopted by WIPO member states, including the US, to help patent applicants generate compliant “Sequence Listing XML” files. As stated in MPEP 2418: WIPO Sequence has two functions: An authoring function and a validation function. Patent applicants will be able to author and…
Read MoreWhat is supplemental examination?
Supplemental examination is a process provided by 35 U.S.C. 257 that allows a patent owner to request the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent.” As stated in the MPEP: “35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or…
Read MoreWhat is a Supplemental Examination Certificate?
A Supplemental Examination Certificate is a document prepared by the USPTO that lists all items of information properly submitted as part of a supplemental examination request. It states whether a substantial new question of patentability (SNQ) affecting at least one claim of the patent is raised in the request. According to the MPEP, The supplemental…
Read MoreWhat is a “Sequence Listing” in patent applications?
A “Sequence Listing” is a separate part of a patent application that contains disclosures of nucleotide and/or amino acid sequences, along with associated information, using a standardized format and symbols. According to MPEP 2421.01, it is required for applications containing disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR…
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