How does the USPTO define ‘composition of matter’ for patent eligibility?
How does the USPTO define ‘composition of matter’ for patent eligibility? The USPTO defines ‘composition of matter’ as one of the four categories of patent-eligible subject matter under 35 U.S.C. ยง 101. According to the MPEP 2106.03: “Compositions of matter” are chemical compounds, mechanical mixtures, gases, and other materials. This category encompasses: Chemical compounds (e.g.,…
Read MoreHow does the USPTO define “abstract ideas” in patent eligibility determinations?
The USPTO’s definition of “abstract ideas” in patent eligibility determinations is outlined in MPEP 2106.04(a). Abstract ideas are considered judicial exceptions to patent eligibility. The MPEP states: “The abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per…
Read MoreHow does the USPTO decide whether to merge multiple reexamination proceedings?
The decision to merge multiple reexamination proceedings is made by the Central Reexamination Unit (CRU) Director or their delegate, typically after reexamination is ordered for the second request. The decision is based on several factors: The need for “special dispatch” in conducting reexamination proceedings, as mandated by 35 U.S.C. 305. The stage of the first…
Read MoreHow does the USPTO determine if a biological material is “known and readily available”?
How does the USPTO determine if a biological material is “known and readily available”? The USPTO considers several factors to determine if a biological material is “known and readily available,” which may negate the need for a deposit. According to MPEP 2404: “The Office will accept commercial availability as evidence that a biological material is…
Read MoreHow does the USPTO determine if a depository is acceptable?
The United States Patent and Trademark Office (USPTO) has specific criteria for determining if a depository is acceptable for biological materials. According to MPEP 2405: “The Commissioner may determine that a depository is acceptable if the depository:” Maintains biological material viability for 30 years or 5 years after the most recent request, whichever is longer…
Read MoreWhat is the difference between USPTO and court standards in patent validity determinations?
The USPTO and federal courts use different standards when determining patent validity, which can lead to different outcomes. MPEP 2286 explains this distinction: “Specifically, invalidity in a district court must be shown by ‘clear and convincing’ evidence, whereas in the Office, it is sufficient to show unpatentability by a ‘preponderance of evidence.’ Since the ‘clear…
Read MoreHow does the USPTO handle correspondence with patent owners during inter partes reexamination?
The USPTO has specific procedures for handling correspondence with patent owners during inter partes reexamination. According to the MPEP: “Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” This means that the USPTO will send all communications to the address…
Read MoreHow does the USPTO handle correspondence with patent owners in ex parte reexamination proceedings?
The USPTO has specific guidelines for handling correspondence with patent owners during ex parte reexamination proceedings: Correspondence Address: The MPEP states, “Communications from the U.S. Patent and Trademark Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” No Double Correspondence: “Double correspondence with…
Read MoreWhere does the USPTO send correspondence regarding supplemental examination?
The USPTO sends correspondence regarding supplemental examination to the official correspondence address of the patent. MPEP 2804 states: “Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address…
Read MoreHow does the USPTO handle copending reexamination and interference proceedings?
How does the USPTO handle copending reexamination and interference proceedings? The USPTO handles copending reexamination and interference proceedings as follows: The Board of Patent Appeals and Interferences (BPAI) has jurisdiction over an interference proceeding. The Central Reexamination Unit (CRU) has jurisdiction over any reexamination proceeding. When both proceedings are copending, the BPAI’s jurisdiction over the…
Read More