How does the USPTO handle questions of compliance with the duty of disclosure in inter partes reexamination?
The USPTO’s approach to handling questions of compliance with the duty of disclosure in inter partes reexamination is outlined in 37 CFR 1.933(b): “If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with…
Read MoreHow does the USPTO handle clerical or typographical errors in patent applications?
How does the USPTO handle clerical or typographical errors in patent applications? The USPTO recognizes that clerical or typographical errors can occur in patent applications. According to MPEP 2163.07: Where a clerical or typographical error in an application is not apparent from the record, amendment to correct such error may be permitted without any further…
Read MoreHow does the USPTO handle claims that potentially cover inoperative embodiments?
The USPTO’s approach to claims that potentially cover inoperative embodiments is nuanced. The presence of some inoperative embodiments within the scope of a claim does not necessarily render the claim non-enabled. According to the MPEP: “The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The standard…
Read MoreHow does the USPTO handle requests for samples of biological materials?
The United States Patent and Trademark Office (USPTO) has specific procedures for handling requests for samples of biological materials. According to MPEP 2410: “The Office will not serve as a go-between for persons seeking samples from a depository.” Instead, the USPTO’s role is to: Provide certification to depositories that a request for a sample is…
Read MoreHow does the USPTO handle benefit claims in international design applications?
The USPTO handles benefit claims in international design applications according to specific procedures outlined in MPEP 2920.05(e): “Pursuant to 37 CFR 1.78(d)(2), the nonprovisional application must contain or be amended to contain a reference to the prior international design application, identifying it by international registration number (if assigned) or by application number and filing date…
Read MoreHow does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreHow does the USPTO handle post-filing date evidence for enablement?
How does the USPTO handle post-filing date evidence for enablement? The USPTO has specific guidelines for handling post-filing date evidence in relation to enablement. According to MPEP 2164.05(a), “Evidence to support a contention that the specification would have been enabling may be submitted after the filing date without incident.” However, it’s important to note that…
Read MoreWhat are the limitations on patenting ‘products of nature’ under USPTO guidelines?
What are the limitations on patenting ‘products of nature’ under USPTO guidelines? The USPTO has specific guidelines regarding the patentability of ‘products of nature’ as outlined in MPEP 2106.03. While natural products fall within the statutory categories of invention, they are subject to additional scrutiny: “Products of nature are considered to be an exception because…
Read MoreHow does the USPTO handle genus claims when species are disclosed in the prior art?
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus. The MPEP states: “A genus does not always anticipate a claim…
Read MoreHow does the USPTO handle submissions of copending reexamination proceedings and applications?
The USPTO has specific guidelines for handling submissions related to copending reexamination proceedings and applications. According to the MPEP: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding…
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