How does the USPTO handle inherency rejections for compositions or products?
How does the USPTO handle inherency rejections for compositions or products? The USPTO has specific guidelines for handling inherency rejections for compositions or products. According to MPEP 2112: “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” For compositions or products, the MPEP…
Read MoreWhat information does the USPTO request from regulatory agencies to determine patent term extension eligibility?
The USPTO requests specific information from regulatory agencies to help determine patent term extension eligibility. According to the MPEP, this information typically includes: Verification of whether the product underwent a regulatory review period within the meaning of 35 U.S.C. 156(g) prior to commercial marketing or use Confirmation that the marketing permission was for the first…
Read MoreHow does the USPTO handle rejections based on lack of utility and enablement?
The USPTO handles rejections based on lack of utility (35 U.S.C. 101) and lack of enablement (35 U.S.C. 112(a)) separately to avoid confusion. The MPEP states: “To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than ‘lack of utility’ should be imposed…
Read MoreWhat happens if reexamination proceedings are not merged?
When reexamination proceedings are not merged, they are typically conducted separately to maintain the “special dispatch” requirement. As explained in MPEP 2686.01: “If the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no…
Read MoreHow does the USPTO handle cases where a biological deposit becomes unavailable?
When the USPTO becomes aware that a biological deposit referenced in a patent application is unavailable, it takes the following steps: The examiner treats the application as if no deposit existed. The applicant may be required to make a replacement or supplemental deposit. The new deposit must satisfy the requirements for patentability under 35 U.S.C.…
Read MoreHow does the USPTO handle translation errors in foreign priority documents for international design applications?
The USPTO handles translation errors in foreign priority documents for international design applications as follows: If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration…
Read MoreHow does the USPTO handle utility rejections for inventions with “throwaway” utilities?
The USPTO addresses “throwaway” utilities in patent applications as part of its examination process. According to MPEP 2107.01: “Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could…
Read MoreWhat happens if a third party submits a petition regarding patent term adjustment?
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736: “Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.” This means that…
Read MoreHow does the USPTO handle terms of degree in patent claims?
The USPTO handles terms of degree in patent claims by evaluating whether the specification provides some standard for measuring that degree. According to MPEP 2173.02: “Terms of degree are not necessarily indefinite… If the specification does provide some standard for measuring that degree, a rejection is not warranted… For example, in Ex parte Oetiker, 23…
Read MoreHow does the USPTO handle claims that cover both statutory and non-statutory embodiments?
The USPTO has specific guidelines for handling claims that cover both statutory and non-statutory embodiments. According to the MPEP: “A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1:…
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