What 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,…
Read MoreHow can examiners use interviews to resolve indefiniteness issues?
Examiners are encouraged to use interviews as an effective tool to resolve indefiniteness issues. The MPEP provides guidance on this approach: “Issues of claim interpretation and clarity of scope may lend themselves to resolution through an examiner interview. For example, the examiner may initiate an interview to discuss, among other issues, the broadest reasonable interpretation…
Read MoreHow should examiners use abstracts in prior art rejections?
Examiners should be cautious when using abstracts for prior art rejections. The MPEP provides the following guidance: When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. When relying on an abstract, “the evidence relied upon is the facts contained in the…
Read MoreHow should the <213> numeric identifier be used in a sequence listing?
The numeric identifier in a sequence listing has a specific use according to the Manual of Patent Examining Procedure (MPEP). As stated in MPEP 2424.02: “ is used for the name of the organism from which the sequence was obtained” This means that when providing a sequence listing, you should use the identifier to specify…
Read MoreCan these methods also be used to overcome a 35 U.S.C. 103 rejection?
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art. MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned…
Read MoreCan an invention have utility but still fail the enablement requirement?
Yes, an invention can have utility but still fail the enablement requirement. The MPEP provides an interesting insight into this situation: “In some instances, the utility of the claimed invention will be provided, but the skilled artisan will not know how to effect that use. In such a case, no rejection will be made under…
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