What is a threshold issue in a patent interference?
A threshold issue in a patent interference is a critical concept that can potentially end the proceeding early. The MPEP 2301.02 defines it as follows: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include: (1) No interference-in-fact, and…
Read MoreWhat is a “threshold issue” in patent interference proceedings?
A threshold issue in patent interference proceedings is a critical concept defined in 37 CFR 41.201. The MPEP states: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference.” One important threshold issue specifically mentioned is: “Unpatentability for lack of written description under…
Read MoreWhat is the “three-year pendency” rule for patent term adjustment?
The “three-year pendency” rule is a key provision in patent term adjustment, as outlined in 37 CFR 1.702(b). Under this rule: A patent is entitled to term adjustment if the USPTO fails to issue the patent within three years of the actual filing date Certain time periods are excluded from this three-year calculation, such as…
Read MoreWhat is the three-year pendency adjustment (B-delay) in patent term adjustment?
The three-year pendency adjustment, also known as B-delay, is a component of patent term adjustment that compensates applicants when patent issuance is delayed beyond three years from the actual filing date. According to MPEP 2731: “37 CFR 1.703(b) pertains to the provisions of 35 U.S.C. 154(b)(1)(B) and indicates that the period of adjustment under 37…
Read MoreWhat is the ‘three-prong test’ for functional claim language?
The ‘three-prong test’ for functional claim language is a method used by the USPTO to determine whether a claim limitation expressed in functional language is sufficiently definite under 35 U.S.C. 112(b). According to MPEP 2173.05(g), the test involves the following three prongs: Is there a clear cut indication of the scope of the subject matter…
Read MoreWhat is the three-prong test for identifying limitations under 35 U.S.C. 112(f)?
The three-prong test is used to determine whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. According to MPEP ยง 2181, the test consists of the following prongs: The claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a…
Read MoreWhat is the three-month rule for replying to Office actions in relation to patent term adjustment?
The three-month rule for replying to Office actions is an important consideration in patent term adjustment calculations. According to 37 CFR 1.704(b): “[A]n applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of…
Read MoreWhat types of documents can third parties submit during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, third parties are generally not allowed to make submissions after the reexamination order is issued. However, the USPTO will accept certain documents to ensure a complete file with updated status information. These include: Copies of notices of suits involving the patent Copies of decisions or papers filed in court…
Read MoreCan a sale by a third party trigger the on-sale bar?
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states: A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may…
Read MoreCan a third party requester get an extension of time in inter partes reexamination?
No, extensions of time are not available to third party requesters in inter partes reexamination proceedings. The MPEP explicitly states: “It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.” This limitation is specific to inter partes reexamination and reflects the process’s focus on the…
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