How does the AIA use the term “disclosure” in 35 U.S.C. 102?
The AIA (America Invents Act) uses the term “disclosure” in specific contexts within 35 U.S.C. 102, particularly in relation to exceptions to prior art. According to MPEP 2152.04: “AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior…
Read MoreHow do “Use” claims relate to process claims in patent applications?
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process. The MPEP states: “Attempts to claim a process without setting forth any steps involved…
Read MoreWhat are the key differences between “use” claims and method claims in patent applications?
The key differences between “use” claims and method claims in patent applications are: “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions. “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not. Method claims are generally…
Read MoreWhy are “Use” Claims often rejected under 35 U.S.C. 101?
“Use” claims are often rejected under 35 U.S.C. 101 because they fail to fall within the statutory categories of patentable inventions. The MPEP 2173.05(q) states: “‘Use’ claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101.” This is further supported by case law,…
Read MoreCan a “Use” claim be rejected under both 35 U.S.C. 101 and 112(b)?
Yes, a “Use” claim can be rejected under both 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. The MPEP 2173.05(q) states: “It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both…
Read MoreWhat is the role of the USDA in the patent term extension process?
The United States Department of Agriculture (USDA), specifically its Animal and Plant Health Inspection Service (APHIS), plays a crucial role in the patent term extension process for certain products. According to the MPEP: “The Animal and Plant Health Inspection Service of the United States Department of Agriculture is responsible for assisting the Office in determining…
Read MoreWhat is the difference between the filing date in the United States and the international filing date?
The filing date of an international design application in the United States is not necessarily the same as the international filing date accorded by the International Bureau. As stated in MPEP 2906: “The filing date of an international design application in the United States is not necessarily the same date as the filing date accorded…
Read MoreWhat additional requirements are there for international design applications designating the United States?
International design applications designating the United States must include additional elements as specified in 37 CFR 1.1021(d): A claim (37 CFR 1.1021(b)(1)(iii) and 37 CFR 1.1025) Indications concerning the identity of the creator (inventor) The inventor’s oath or declaration (37 CFR 1.63 and 1.64) The MPEP states: “A claim is a filing date requirement for…
Read MoreWhat is the United States’ policy on deferment of publication for international design applications?
The United States does not allow deferment of publication for international design applications designating the U.S. This policy is based on a specific declaration made under the Hague Agreement. As stated in the MPEP, “Pursuant to Article 11(1)(b), the United States declared that where the United States is designated in an international design application, it…
Read MoreAre copies of U.S. patents and patent application publications required in reexamination requests?
Generally, copies of U.S. patents and U.S. patent application publications are not required to be submitted with reexamination requests. The MPEP 2218 states: “The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent…
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