What happens to unamended patent claims in reexamination after a Board decision?
The treatment of unamended patent claims in reexamination after a Board decision depends on whether the claim is rejected or allowed. If an unamended patent claim is rejected and the Board affirms the rejection, the claim will be canceled. However, dependent claims based on the rejected unamended patent claim may still be confirmed or deemed…
Read MoreWhat types of persons typically file ex parte reexamination requests?
MPEP 2212 provides a non-exhaustive list of persons who are likely to use the ex parte reexamination process under 35 U.S.C. 302: Patentees Licensees Potential licensees Attorneys without identification of their real client in interest Infringers Potential exporters Patent litigants Interference applicants International Trade Commission respondents This diverse list reflects the various stakeholders in the…
Read MoreWhat are the typical circumstances where adequate written description issues arise in patent applications?
The MPEP 2163.03 outlines three typical circumstances where adequate written description issues arise: Original claims: When the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. New or amended claims: When the claims are not supported…
Read MoreWhat types of treatments or prophylaxis are considered in Step 2A Prong Two?
According to MPEP 2106.04(d)(2), examples of “treatment” and “prophylaxis” limitations include: Acupuncture Administration of medication Dialysis Organ transplants Phototherapy Physiotherapy Radiation therapy Surgery The MPEP states: “Examples of ‘treatment’ and prophylaxis’ limitations encompass limitations that treat or prevent a disease or medical condition, including, e.g., acupuncture, administration of medication, dialysis, organ transplants, phototherapy, physiotherapy, radiation…
Read MoreWhat types of prior art can be submitted to the USPTO under 35 U.S.C. 301?
According to MPEP 2203, the types of prior art that can be submitted to the USPTO under 35 U.S.C. 301 include: Prior art patents Printed publications Written statements Additional information The MPEP states: The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional…
Read MoreWhat types of documents can be cited as prior art in a reexamination proceeding?
What types of documents can be cited as prior art in a reexamination proceeding? According to MPEP 2602, the types of documents that can be cited as prior art in a reexamination proceeding are limited to patents and printed publications. The MPEP states: “Only patents or printed publications may be cited under 35 U.S.C. 301…
Read MoreWhat types of documents can be submitted as prior art in patent reexamination?
According to MPEP 2204, the types of documents that can be submitted as prior art in patent reexamination are limited to patents and printed publications. The MPEP specifically states: “Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent file at any time during…
Read MoreWhat types of post-patent proceedings should be reported during supplemental examination?
According to MPEP 2820, patent owners should report various types of post-patent proceedings during supplemental examination. These include: Ex parte reexamination Inter partes reexamination Reissue Supplemental examination Post-grant review Inter partes review Covered business method patent review The MPEP states: “The notice is limited to an identification of the post-patent Office proceeding, including the type…
Read MoreWhat types of submissions require service on the patent owner?
According to the MPEP, the following types of submissions by persons other than the patent owner require service on the patent owner: Prior art patents Printed publications Section 301 written statements Additional information in a patent file The MPEP specifically states: “A copy of any submission of prior art patents, printed publications, and/or section 301…
Read MoreHow does the MPEP distinguish between different types of reexamination requests?
The MPEP distinguishes between different types of reexamination requests based on the requester’s intent and the claims made. Two main types are discussed: Requests indicating claims are unpatentable over the art: “The example in MPEP ยง 2247.01 is drafted for the case where the ‘request indicates that Requester considers that Claims 1-2 are unpatentable over…
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