What is considered “information material to patentability”?
Information material to patentability refers to any information that is relevant to the patentability of an invention. This includes prior art, conflicting applications, and any other information that could affect the novelty, non-obviousness, or utility of the claimed invention. According to 37 CFR 1.56, information is material to patentability when: It establishes, by itself or…
Read MoreWhat is a fee address for maintenance fee purposes?
A fee address is a designated address for receiving communications related to maintenance fee payments for patents. According to MPEP 2540, “Generally, notices, receipts, and other communications relating to the payment of a maintenance fee will be directed to the correspondence address used during the prosecution of the application, unless a ‘fee address’ for the…
Read MoreWhat is ex parte reexamination?
Ex parte reexamination is a procedure that allows any person to request a review of an issued patent at any time during its enforceability period. The process involves the United States Patent and Trademark Office (USPTO) examining the patent again to determine if there is a substantial new question of patentability. According to MPEP 2209,…
Read MoreWhat is an ex parte reexamination request?
An ex parte reexamination request is a formal petition filed with the U.S. Patent and Trademark Office (USPTO) to review the patentability of one or more claims in an existing patent. The request is based on prior art patents or printed publications and can be filed by any person during the period of enforceability of…
Read MoreWhat is an Ex Parte Reexamination Certificate?
An Ex Parte Reexamination Certificate is a document issued at the conclusion of an ex parte reexamination proceeding, except in specific cases of merger with reissue applications or inter partes reexamination proceedings. The MPEP states: An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has…
Read MoreWhat is an “enabling disclosure” in patent law?
An “enabling disclosure” in patent law refers to a prior art reference that provides sufficient information for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Manual of Patent Examining Procedure (MPEP) Section 2121.01 states: “A reference contains an ‘enabling disclosure’ if the public was…
Read MoreWhat is a decision denying reexamination?
A decision denying reexamination is a formal response issued by a patent examiner when a request for inter partes reexamination fails to establish a substantial new question of patentability (SNQ) or a reasonable likelihood of prevailing (RLP) based on patents or printed publications. As stated in the MPEP: “The request for reexamination will be denied…
Read MoreWhat is a Continuation-In-Part (CIP) application?
A Continuation-In-Part (CIP) application is a type of patent application that contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier parent application. The new matter in a CIP application can be claimed, but it may affect the effective filing date of certain claims. According…
Read MoreWhat is the definition of a contested case in patent law?
According to MPEP 2301.02, a contested case is defined as: “[A] Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.” In simpler terms, a contested case is a proceeding before the Patent Trial and Appeal Board…
Read MoreWhat is an applicant suggestion for interference?
An applicant suggestion for interference is a process where an applicant, including a reissue applicant, suggests an interference with another application or patent. This is outlined in 37 CFR 41.202, which states: “An applicant, including a reissue applicant, may suggest an interference with another application or a patent.” The suggestion must meet specific requirements, including…
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