What is analogous art in patent law?
Analogous art in patent law refers to prior art that can be used in an obviousness rejection under 35 U.S.C. 103. According to MPEP 2141.01(a), a reference is considered analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different…
Read MoreWhat happens after reexamination is ordered under 35 U.S.C. 304?
After reexamination is ordered under 35 U.S.C. 304, the examiner will consider any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 when preparing the first Office action. As stated in MPEP 2253: “Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance…
Read MoreWhat constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is in public use before the critical date and is ready for patenting. The Federal Circuit has explained that the proper test for the public use prong includes two key elements: The purported use was accessible to the public; or The invention was…
Read MoreWhat constitutes a “public use” under 35 U.S.C. 102(a)(1)?
A “public use” under 35 U.S.C. 102(a)(1) is defined in the MPEP 2152.02(c) as follows: “Public use” includes any use of the claimed invention by a person other than the inventor or a joint inventor, or any use of the claimed invention by the inventor or a joint inventor that is accessible to the public.…
Read MoreWhat constitutes a “printed publication” in patent law?
A “printed publication” in patent law refers to a document that is sufficiently accessible to the public interested in the art before the critical date. As stated in MPEP 2128.01, “dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” The Federal Circuit in Constant v. Advanced…
Read MoreWhat constitutes new matter in patent applications?
Amendments to an application which are supported in the original description are NOT considered new matter. The Manual of Patent Examining Procedure (MPEP) Section 2163.07 states: “Amendments to an application which are supported in the original description are NOT new matter.” This means that changes to the application that are already described or implied in…
Read MoreWhat constitutes joint inventorship under U.S. patent law?
Joint inventorship occurs when an invention is made by two or more persons jointly. According to 35 U.S.C. 116, joint inventors can apply for a patent even if: They did not physically work together or at the same time Each did not make the same type or amount of contribution Each did not contribute to…
Read MoreWhat constitutes conception of an invention?
Conception is a critical element in determining inventorship. The MPEP provides guidance on what constitutes conception: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se,…
Read MoreWhat constitutes an admission as prior art in patent examinations?
An admission as prior art in patent examinations is a statement made by the applicant or their representative that acknowledges certain information as being part of the prior art. According to MPEP 2129, “A statement by an applicant in the specification or made during prosecution identifying the work of another as ‘prior art’ is an…
Read MoreWhat can be cited to the USPTO for placement into patent files?
According to MPEP 2202, two types of information can be cited to the USPTO for placement into patent files: Prior art in the form of patents or printed publications Written statements made by the patent owner concerning the scope of the claims The MPEP states: “Prior art in the form of patents or printed publications…
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