This section provides a brief overview of rejections based on prior art. For instance, prior art rejections should ordinarily be confined strictly to the best available art. It covers how to handle reliance on abstracts and foreign language documents in support of a rejection. Essentially, when an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document. In addition, this section covers reliance on admitted prior art in support of a rejection.

This section also briefly covers the distinction between 35 U.S.C. 102 and 103. Essentially, the distinction between rejections based on 35 U.S.C. 102 include those where the claim is anticipated by the reference. No question of obviousness is present. In a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. Lastly, this section includes a discussion on determining the effective filing date of a claimed invention.

• Review Ed9 10.2019: 706.02

Nonprovisional applications that are accepted as complete applications by the USPTO will be assigned for examination. There are many different departments handling different classes of inventions (i.e., biotech, chemical, mechanical, etc.). Applications will be further classified to an individual examiner who will examine the application on a first come, first serve basis. Certain departments are so backed up that it may take well over a year (and in many instances much longer) for the applicant to receive just the first Office action. This section discusses petitions to make special, the accelerated examination program, and prioritized examination, all of which can be used to speed up the examination of an application.

• Review Ed9 10.2019: 708

This section covers third party inquiries and correspondence in a published application. It references, 35 U.S.C. 122 which includes two provisions regarding submissions by third parties in patent applications.

• Review Ed9 10.2019: 1134

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

• Review Ed9 10.2019: 2105

In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date.

• Review Ed9 10.2019: 2124

Chapter 2800 is newly added to the MPEP and provides guidance on Supplemental Examination, which was created by the Leahy-Smith America Invents Act (AIA) effective September 16, 2012. Supplemental examination provides a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent.

• Review Ed9 10.2019: 2800

Derivation proceedings were created to ensure that the first person to file an application is actually a true inventor. It will ensure that a person will not be able to obtain a patent for an invention that he did not actually invent. If a dispute arises as to which of the two applicants is a true inventor, it will be resolved through a derivation proceeding conducted by the Board.

A derivation proceeding is a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.

An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

The procedure for derivation will take effect on March 16, 2013.

• Review Ed9 10.2019: Updates & Supplements

Inter partes Review Ed9 10.2019: is a new trial proceeding conducted at the Board to Review Ed9 10.2019: the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Inter partes Review Ed9 10.2019: process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant Review Ed9 10.2019: is instituted, the termination of the post grant Review Ed9 10.2019:. The patent owner may file a preliminary response to the petition.

An inter partes Review Ed9 10.2019: may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

The procedure for conducting inter partes Review Ed9 10.2019: will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.

• Review Ed9 10.2019: Updates & Supplements

Post grant Review Ed9 10.2019: is a new trial proceeding conducted at the Board to Review Ed9 10.2019: the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3).

Post grant Review Ed9 10.2019: process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition.

A post grant Review Ed9 10.2019: may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

The procedure for conducting post grant Review Ed9 10.2019: will take effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

• Review Ed9 10.2019: Updates & Supplements

The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to Review Ed9 10.2019: the patentability of one or more claims in a covered business method patent.

Business method patents refer to patents covering a business method. A business method often involves combining software automation with more traditional business methodology.

One of the most famous business method patents is the Amazon one-click patent that allows customers to Amazon.com to buy items with one-click of their mouse by using a pre-defined credit card and address.

TPCBM proceedings employ the standards and procedures of a post grant Review Ed9 10.2019:, with certain exceptions.

For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent.

The procedure for conducting TPCBM Review Ed9 10.2019: will take effect on September 16, 2012, but only applies to covered business method patents. The program will sunset for new TPCBM petitions on September 16, 2020.

• Review Ed9 10.2019: Updates & Supplements