How 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:…
Read MoreHow does the USPTO handle claims directed to a single means?
The USPTO treats claims directed to a single means with special consideration due to their potential lack of enablement. According to MPEP 2164.06(c): “A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an enablement rejection under 35 U.S.C. 112(a) or pre-AIA…
Read MoreHow does the USPTO handle protests in patent applications?
The USPTO has specific procedures for handling protests in patent applications. According to MPEP 1901: Where the protest specifically identifies the application, and is otherwise compliant, the protest will be considered by the Office if it is matched with the application in time to permit review by the examiner during prosecution. However, if there’s insufficient…
Read MoreHow does the USPTO handle protected or secret information in protests?
The USPTO has specific procedures for handling protected or secret information submitted with protests. According to the MPEP: “Information which is subject to a court-imposed protective or secrecy order may be submitted with, or as a part of, a protest under 37 CFR 1.291. Trade secret information which was obtained by a protestor through agreements…
Read MoreHow does the USPTO handle prior art references with predicted properties or prophetic examples?
The USPTO treats prior art references with predicted properties or prophetic examples as potentially valid prior art. According to MPEP 2121.04: “A reference that contains a detailed description of a specific embodiment, even if the embodiment has not been prepared or tested, may be sufficient to anticipate or render obvious a claimed invention.” This means…
Read MoreHow does the USPTO handle prior art that was previously considered during the original examination?
The USPTO has specific guidelines for handling prior art in ex parte reexamination that was previously considered during the original examination. According to MPEP 2244: “If prior art patents or printed publications are presented by the reexamination requester for review in a reexamination proceeding, and the requester has not had the patents or printed publications…
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