How does the USPTO assess enablement for artificial intelligence (AI) inventions?
The USPTO assesses enablement for artificial intelligence (AI) inventions similarly to other computer-implemented inventions, but with additional considerations due to the complex and often unpredictable nature of AI. While MPEP 2164.06(c) doesn’t specifically mention AI, it provides guidance that applies to such technologies: “The specification must teach those skilled in the art how to make…
Read MoreHow does the USPTO assess the materiality of information in supplemental examination?
The USPTO’s assessment of the materiality of information in supplemental examination is guided by the principles outlined in MPEP 2816.02. Key aspects of this assessment include: Materiality is evaluated in the context of patentability Information is material if it creates a substantial new question of patentability (SNQ) The standard is whether a reasonable examiner would…
Read MoreWhat are the size restrictions for ASCII plain text files submitted via the USPTO patent electronic filing system?
The USPTO has specific size restrictions for ASCII plain text files submitted via their patent electronic filing system: The size limit for “Sequence Listing” ASCII plain text files is 100 megabytes. Compression is not allowed for “Sequence Listing” files submitted via the USPTO patent electronic filing system. For “Large Tables” and “Computer Program Listing Appendix”…
Read MoreHow does the USPTO apply the “Mere Function of Machine” rule during patent examination?
The United States Patent and Trademark Office (USPTO) applies the “Mere Function of Machine” rule by not rejecting process or method claims solely because they describe the function of a disclosed machine. As stated in MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
Read MoreHow does the USPTO communicate with applicants regarding protests?
The USPTO communicates directly with the applicant, not the protestor, regarding any protests filed against their application. According to MPEP 1901.05: “The Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant to supply information pursuant to 37 CFR 1.291(f), including replies to specific questions raised…
Read MoreWhat additional information might the USPTO require for patent term extension applications?
The USPTO may require additional information from applicants for patent term extension applications. According to MPEP 2755: “The Director or other appropriate officials may require from applicant further information or make such independent inquiries as desired before a final determination is made on whether a patent is eligible for extension.“ If further information is required,…
Read MoreHow does the USPTO determine if a claim limitation invokes 35 U.S.C. 112(f)?
The USPTO examines each claim limitation to determine if it invokes 35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph). According to MPEP 2173.01: “As part of the claim interpretation analysis, examiners should determine whether each limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph or not. If the claim…
Read MoreIs it acceptable to use ‘optionally’ in patent claims?
Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this: “In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as…
Read MoreCan new terms be used in patent claims?
Yes, new terms can be used in patent claims. In fact, the MPEP recognizes that it’s often desirable to use new terms to describe and define new inventions more precisely. As stated in MPEP 2173.05(a): “Courts have recognized that it is not only permissible, but often desirable, to use new terms that are frequently more…
Read MoreCan litigation-related materials be used in a patent protest?
Yes, litigation-related materials can be submitted as part of a protest under 37 CFR 1.291. The MPEP provides examples of such materials: “Some representative examples of other forms of evidence are litigation-related materials such as complaints, answers, depositions, answers to interrogatories, exhibits, transcripts of hearings or trials, court orders and opinions, stipulations of the parties,…
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