Posts Tagged: mpep


Mission Impossible? How U.S. Drafters Can Minimize Support/Clarity Issues Under Article 84 EPC

When drafting Patent Cooperation Treaty (PCT) applications, or applications intended to be prosecuted abroad, a U.S. drafter inevitably faces the challenge of providing a description in …
By Enrica Bruno
6 months ago 0

Inventor Asks Supreme Court to Review CAFC Decision on MPEP Rule Allowing Reopening of Examination After Appeal

On April 10, inventor Gilbert Hyatt and the American Association for Equitable Treatment (AAET) filed a petition for writ of certiorari with the U.S. Supreme Court asking …
By Steve Brachmann
7 months ago 2

Misapplication of Obviousness: What the MPEP gets wrong about obviousness rejections

MPEP 2141 actually cites to Arendi, but then quotes the case entirely out of context. This is a worrisome problem that can be found in many parts of …
By Gene Quinn
1 year ago 18

A Claim of priority Cannot Be Made With an Incorporation by Reference

Upon filing a patent application, the USPTO mails a filing receipt.  The domestic and foreign claim of priority is stated and should be checked to make sure …
By James Yang
2 years ago 1

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed …
By James Yang
2 years ago 3

USPTO to Clarify Guidance on Written Description of Antibodies

The memorandum points to Amgen for stating that the “newly characterized antigen” test could not stand because it contradicted the quid pro quo of the patent system …

Federal Circuit Opens the Door to Extrinsic Evidence in Support of Patent Eligibility

A casual observer may read the Aatrix dissent, or cases cited therein, to say it is improper to consider extrinsic evidence.  In particular, the dissent quotes Secured …
By James Carmichael
2 years ago 3

Federal Circuit Decisions Breathe New Life Into Alice Responses by Patent Prosecutors

While most commentary to date has focused on the implications for litigation, two recent Federal Circuit decisions have promising implications for patent prosecutors struggling to overcome conclusory …

Revised MPEP May Provide New Tools in Alice Rejections

The MPEP requires that “[i]n particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and …
By Kevin A. Rieffel
2 years ago 7

Cognitive Dissonance: How the PTAB Reported Appeal Statistics Ruins the Data for Everyone

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for …
By Adam Stephenson
2 years ago 2

Avoiding drug development clinical trials from being an invalidating public use

The legal principles set out above, while seemingly straight-forward enough, leave ample room for case-specific interpretation and application when it comes to the question of whether the …
By Theodore Chiacchio
2 years ago 4

Inherency in Obviousness – What is the Correct Standard?

Although the distinction between inherency in obviousness and anticipation is sometimes blurred, the two concepts are quite different and a claim may be inherently anticipated without being …

A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in …
By William E Nowakowski
3 years ago 1

USPTO Changes Format and Links to MPEP

Not only can't you find the relevant MPEP sections you are looking for through a Google search, but you also cannot find the relevant statutes or CFR …
By Gene Quinn
7 years ago 7

Opportunity to Reform Existing PTO Regulations and to Ease Patent Application Paperwork Burden

The Patent Office recently requested comment on the paperwork that applicants submit during post-filing, pre-allowance patent prosecution (Patent Processing (Updating), comment request., 77 Fed. Reg. 16813-17 (Mar. 22, 2012)). This …
By David Boundy
8 years ago 5