Does the specification need to disclose well-known information?
Generally, the specification does not need to disclose information that is well-known to those skilled in the art. MPEP 2164.05(a) states: “The specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public.“ This principle is supported…
Read MoreWhat is a well-established utility in patent law?
A well-established utility in patent law is one that meets specific criteria as defined by the USPTO. According to the MPEP, An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or…
Read MoreWhat are the three ways an inter partes reexamination proceeding can be concluded?
According to MPEP 2694, inter partes reexamination proceedings can be concluded in three ways: (A) By bringing the prosecution to an end through denial, vacating, or termination of the reexamination proceeding. (B) By issuing a reexamination certificate under 37 CFR 1.997(b). (C) By merging the reexamination proceeding with a reissue proceeding and granting a reissue…
Read MoreWhat is the Wayback Machine® and how is it used in patent law?
The Wayback Machine® is a digital archive maintained by the Internet Archive, a non-profit organization. It’s used to view archived versions of websites as they existed at specific points in time. In patent law, the Wayback Machine® can be a valuable tool for establishing the public accessibility of online content on a specific date. According…
Read MoreHow does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?
The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect: “The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.” To satisfy the “way” prong, the examiner…
Read MoreHow does the “was-was” analysis apply to product-by-process claims?
The “was-was” analysis is a key concept in evaluating product-by-process claims. According to MPEP 2113: “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or…
Read MoreWhat are the Wands factors for determining undue experimentation?
The Wands factors, established in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), are a set of criteria used to determine whether a patent disclosure satisfies the enablement requirement. According to MPEP 2164.01(a), these factors include: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior…
Read MoreWhat is the Waiver of Statement Program in ex parte reexamination?
The Waiver of Statement Program is an initiative to expedite ex parte reexamination proceedings. According to MPEP 2249, “If the patent owner waives the right to file a patent owner’s statement in response to a request from the Office, the examiner will be able to act on the first Office action on the merits immediately…
Read MoreCan an applicant voluntarily identify grace period inventor-originated disclosures?
Yes, an applicant can voluntarily identify grace period inventor-originated disclosures. The MPEP encourages this practice: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to identify any prior inventor-originated disclosures or to use the format…
Read MoreWhy are viruses mentioned in both direct and indirect self-replication categories?
The MPEP 2403.01 mentions viruses in both direct and indirect self-replication categories to illustrate that these categories are not mutually exclusive. The MPEP states: “The list of representative examples of each type of replicating material includes viruses to demonstrate that the two lists in the rule are not intended to be mutually exclusive.” This inclusion…
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