What 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…
Read MoreWhat 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…
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