What is a reexamination certificate?
A reexamination certificate is a document issued by the USPTO after the completion of a patent reexamination process. It confirms the patentability of the original patent claims, cancels any unpatentable claims, or incorporates allowed amended or new claims. The distribution of this certificate is crucial, as outlined in MPEP 2292: “An e-copy of the reexamination…
Read MoreWhat is reduction to practice in patent law?
Reduction to practice in patent law refers to the process of demonstrating that an invention actually works for its intended purpose. There are two types of reduction to practice: Actual reduction to practice: This occurs when an inventor physically creates and tests the invention. Constructive reduction to practice: This occurs when a patent application is…
Read MoreWhat is a protest under 37 CFR 1.291?
A protest under 37 CFR 1.291 is a mechanism that allows members of the public to bring information to the attention of the USPTO regarding pending patent applications. The MPEP states: 37 CFR 1.291 gives recognition to the value of written protests in bringing information to the attention of the Office and in avoiding the…
Read MoreWhat is prosecution laches in patent law?
Prosecution laches is a legal doctrine that can result in the forfeiture of patent rights due to unreasonable and undue delay in prosecution. The Federal Circuit affirmed this principle in In re Bogese, stating: “[Applicant] filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity…
Read MoreWhat is patent term adjustment?
Patent term adjustment (PTA) is additional time added to a patent’s term to compensate for delays in patent issuance caused by the United States Patent and Trademark Office (USPTO). The adjustment is governed by 35 U.S.C. 154(b) and is calculated based on various types of delays specified in the statute. As stated in MPEP 2731:…
Read MoreWhat is a protest in patent law?
A protest in patent law is a submission by the public against pending patent applications, as permitted by 37 CFR 1.291. The MPEP states that “37 CFR 1.291 permits protests by the public against pending applications.” These protests are not limited to prior art documents but can include any information that, in the protestor’s opinion,…
Read MoreWhat is the “on sale” bar under pre-AIA 35 U.S.C. 102(b)?
The “on sale” bar under pre-AIA 35 U.S.C. 102(b) prevents an inventor from obtaining a patent if the invention was on sale in the United States more than one year prior to the date of the application for patent. The Supreme Court in Pfaff v. Wells Electronics, Inc. established a two-part test for determining if…
Read MoreWhat is an omnibus claim in patent law?
An omnibus claim is a type of patent claim that typically reads as follows: “A device substantially as shown and described.” This type of claim is generally considered problematic in patent law. According to MPEP 2173.05(r), “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is…
Read MoreWhat is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is a document issued by the patent examiner at the conclusion of an inter partes reexamination proceeding. It is prepared using Form PTOL-2068 and indicates the examiner’s intention to issue a reexamination certificate. According to the MPEP, Upon conclusion of the inter partes reexamination…
Read MoreWhat is a means-plus-function claim limitation?
A means-plus-function claim limitation is a claim element that uses the term “means” (or “step”) and is coupled with functional language, without reciting specific structure to perform the function. These limitations are interpreted under 35 U.S.C. 112(f). As stated in the MPEP: “An element in a claim for a combination may be expressed as a…
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