What constitutes “sufficient accessibility” for a printed publication under MPEP 2152.02(b)?
According to MPEP 2152.02(b), “sufficient accessibility” for a printed publication is determined by whether the publication was made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. The MPEP states: “The level of public accessibility required to qualify as a printed publication…
Read MoreWhat happens if an applicant successfully rebuts a utility rejection?
When an applicant successfully rebuts a utility rejection, the patent examiner is required to withdraw both the utility rejection and any related rejections. The MPEP clearly states: “If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection…
Read MoreHow does a successful appeal affect patent term adjustment?
A successful appeal can result in additional patent term adjustment (PTA). According to MPEP 2731: “37 CFR 1.703(e) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(iii) and indicates that the period of adjustment under 37 CFR 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on…
Read MoreWhat is the requirement for substituting equivalents in patent obviousness?
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP: “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized…
Read MoreWhat is considered ‘substantive involvement’ in a patent application?
The MPEP doesn’t provide a precise definition of ‘substantive involvement’, but it does offer guidance on who is considered substantively involved in the preparation or prosecution of a patent application. According to 37 CFR 1.56(c), this includes: “Every other person who is substantively involved in the preparation or prosecution of the application and who is…
Read MoreHow is “substantially the same subject matter” determined for pre-AIA 35 U.S.C. 135(b)?
Determining “substantially the same subject matter” for pre-AIA 35 U.S.C. 135(b) is crucial for interference proceedings. The MPEP provides guidance on this determination: “The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different…
Read MoreWhat is the significance of “substantially identical” claims in intervening rights?
The concept of “substantially identical” claims is crucial in determining whether intervening rights apply in patent reexamination or reissue cases: Intervening rights only apply to claims that are not substantially identical to the original claims. If a claim is substantially identical to the original, it is treated as if it was in the original patent,…
Read MoreWhat is the “substantial utility” requirement in patent law?
The “substantial utility” requirement in patent law refers to the need for an invention to show a significant and presently available benefit to the public. According to MPEP 2107.01: “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some…
Read MoreWhat is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…
Read MoreWhat is the significance of a “substantial new question of patentability” in supplemental examination?
A “substantial new question of patentability” (SNQ) is crucial in supplemental examination as it determines whether further action is necessary. The MPEP 2816.03 states: “The determination must identify each item of information that raises a substantial new question of patentability.” The significance of an SNQ in supplemental examination includes: It indicates that the submitted information…
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